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Comments On The Prescribed Draft Of Amendments To Patent Rules

 The patents rules can be amended by the virtue of section 159 of the Patent Act 1970, the following changes were proposed by the Central government on 4th of December 2018 through the Department Of Industrial Policy And Promotion.

1. The notification takes the title of the rules to be amended to Patents (Amendment) Rules, 2018.

2. Rule 18 which is regarding the appropriate office in relation to international applications, the rules clarifies that it be the designated office ,receiving office and elected office in case of international application. The following are proposed to be the appropriate offices referred to in Rule 4:

  • Central government has proposed to add a proviso to the above stated rule sub rule (2) which says that the Delhi branch shall be the appropriate office for the handling of international searching authority functions.
  • The said proviso is mainly regarding reducing the paper usage, by submitting the originals to the patent officer in a scanned format exclusively by the electronic transmission which is authenticated.
  • Also before this amendment there was no time prescribed for submission of the required documents but now the prescribed time limit is 15 days, if not complied with the document shall be deemed to be have been not filed for the international application.
  • In order to make things more manageable, by giving the deadline for submission of the document will also aid; reducing the workload, exclusion of fraudulent practises by the parties, exclusion of fraudulent document at the preliminary stage itself.

3. Rule 24(C) is regarding the expedited examination wherein it is stated that expedited examination is possible in two scenarios. First, where India is selected as competent international searching authority and also elected as an international preliminary examining authority for PCT applications. And secondly, when the applicant is a startup According to the Patent (Amendment) Rules, 2017[1]

However, the following is proposed by the draft of 2018:

  • The applicant can be a small entity defined in rule 2 (fa),
  • It gives clearer definition of small entity which comprises of enterprises engaged in the manufacture or production of goods pertaining to any industry. The following are being defined according to their pecuniary capacities as: micro enterprise, a small enterprise, a medium enterprise and also as enterprises engaged into providing or rendering of services in the same three categories as specified above.
  • This amendment strives to give a wider scope to the smaller enterprises by prescribing limitations in the form of pecuniary capacities of various small entities
  • Not only the start ups but also the small businesses are proposed to be provided with the opportunity to be eligible for early examination.
  • A subsequent clause states that in case of a natural person(s) applying for an early examination the condition prescribed is that either the applicant or at least one of the applicants is a female.
  • This said clause is broadening the scope for female inventors who aren’t given their due credits for inventions. Thus this condition expresses a willingness to strengthen women empowerment in India
  • Also there are some adverse conditions that would arise due to the insertion of the said clause a man is explicitly declined his right to apply for an early examination if is not accompanied with a female applicant.
  • The applicant may also apply for an expedited examination if it fulfils the requirement of being a government undertaking, which is being defined under the patent act section 2(1): “Government undertaking” means any industrial undertaking carried on—
    (i) by a department of the Government, or
    (ii) by a corporation established by a Central, Provincial or State Act, which is owned or controlled by the Government, or
    (iii) by a Government company as defined in section 617 of the Companies Act, 1956 (1 of 1956), or
    (iv) by  an  institution wholly  or  substantially  financed  by  the Government;
  • This clause is not only for Indian applicants but is also applicable to the foreign applicants, broadening the application gateway and making it uniform for all the applicants.
  • The examination can also be expedited when the Indian patent office is having an agreement with some other patent office, the applicant will be eligible for the processing of the early examination, although the requisites of the Act would have to be followed as a standard.
  • Clause 4 of the said rule says that if the if the application does not fall under any of the categories required then the application will be processed according to Rule 24(B) which is the regular procedure of application for examination, the said amendment has proposed that if such requirements as mentioned are met before issuance of FER, the application shall be processed for expedited examination in accordance with the provisions of rule 24-C
  • The said proviso gives the parties a chance of including themselves under any of the stated requirements to get the advantage of the early examination by applying under 24 (C) before FER is issued.

4. Rule 55 which is with regards to opposition to the patent, sub rule 2 it is regarding the function of the controller the proviso added states the changes required in the composition of controller.

  • The change prescribes for the controller to constitute a bench of two people who shall dispose the application jointly and the proviso added states that if the two disagree on any application the controller shall assign a third party for the final decision.
  • Also the wording is proposed to be changed from “controller” to “bench” in the subsequent sub rules 3 and 5 of the clause.

5. All the other changes were made in the first schedule with regards to the entry no. 48 and 48 A and the addition of transmittal fees for international application (for e PCT filing) since all the documents are proposed to be transmitted in electronic format from now on.

6. Further 49 A is regarding the preparation of certified copy of priority document and e-transmission through WIPO DAS.

7.All the other changes made in the schedule are the manifestation of the above mentioned changes in the expedited examination essentials in their respective forms.

Author: Ms. Aditi Zambre, Intern 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.egazette.nic.in/WriteReadData/2017/180577.pdf

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Patents (Amendment) Rules, 2018

Introduction

On the 4th December, 2018, The Ministry of Commerce and Industry released the draft (rules amendment) for Patents Act 1970. These rules are mainly amended with respect to international applications, patent opposition and a few form related extensions. The Central Government proposes to make these amendments in exercise of the powers conferred by section 159 of the Patents Act, 1970. Given below are the extracts of actual sections of Patents Act and the respective changes made to them are highlighted or in bold.

Amendments to Rules

Sr. No.
Before

After

Amendment  I :

In the principal rules, after sub-rule (2) of rule 18, the following proviso shall be inserted. The words in bold represent the added explanation.

Rule 18 OF INDIAN PATENTS ACT 1970:

18. Appropriate office in relation to international applications. —

(1) …

(2) …

(3) An international application shall be filed at and processed by the appropriate office, referred to in sub-rule (1), in accordance with the provisions of this Chapter, the Treaty and the regulation under the Treaty.

(3) An international application shall be filed at and processed by the appropriate office, referred to in sub-rule (1), in accordance with the provisions of this Chapter, the Treaty and the regulation under the Treaty.

“Provided that, in respect of international application, a patent agent shall file, leave, make or give all documents including scanned copies that are required to be submitted in original, only by electronic transmission duly authenticated;”

“Provided further that the original documents, if required to be submitted in original, shall be submitted within a period of fifteen days; failing which such documents shall be deemed not to have been filed”.

Amendment II

In the principal rules , in sub-rule (1) of rule 24 C, clause (b) shall be substituted, as follows:- The words in bold represent the added sub points.

Rule 24 C OF INDIAN PATENTS ACT 1970:

(1) An applicant may file a request for expedited examination in Form 18A along with the fee as specified in the first schedule only by electronic transmission duly authenticated within the period prescribed in rule 24B on any of the following grounds, namely:-

(a) that India has been indicated as the competent International Searching Authority or elected as an International Preliminary Examining Authority in the corresponding international application; or
(b) that the applicant is a startup.

(c) that the applicant is a small entity as defined in rule 2(fa) of the principal rules; or

(d) that in case of natural persons only, the applicant or at least one of the applicants is a female; or

(e) that the applicant is a government undertaking in accordance with clause (h) of sub-section (1) of section 2 of the Act in case of an Indian applicant, or is a similar entity in case of a foreign applicant.

Explanation:- The term ‘substantially financed’ in sub-clause (iv) of clause (h) of sub-section (1) of section 2 of the Act shall have the same meaning as in the Explanation to sub-section (1) of section 14 of the Comptroller and Auditor-General’s (Duties, Powers and Conditions of Service) Act, 1971, or

(f) that the applicant is eligible under an arrangement for processing an international application pursuant to an agreement between Indian Patent Office with another participating patent office.

Explanation: The patentability of patent applications filed under clause (f) above will be in accordance with the relevant provisions of the Act.”

Amendment III

In the principal rules, in sub-rule (4) of rule 24-C, the following proviso shall be inserted

Rule 24 C OF INDIAN PATENTS ACT 1970:

(4) Where the request for expedited examination does not comply with the requirements of this rule, such a request shall be processed in accordance with the provisions contained in rule 24B, with an intimation to the applicant, and shall be deemed to have been filed on the date on which the request for expedited examination was filed.

Provided that if such requirements are met before issuance of FER, the application shall be processed for expedited examination in accordance with the provisions of rule 24-C.

Amendment IV

In rule 55 of the principal rules after sub-rule (2), the following sub-rule shall be inserted, namely

Rule 55 OF INDIAN PATENTS ACT 1970:

55. Opposition to the patent.

(1) …

(1A) …

(2) The Controller shall consider such representation only when a request for examination of the application has been filed.

“(2A) The Controller shall, by order, constitute a bench comprising two members, who shall proceed to dispose of the application and the representation jointly:

Provided that if the members of the bench differ in opinion on any issue, the Controller shall nominate a third member to the bench and subsequently the majority decision will be treated as final.”

(3) On consideration of the representation if the BENCH is of the opinion that application for patent shall be refused or the complete specification requires amendment, he shall give a notice to the applicant to that effect.

(4) …

(5) On consideration of the statement and evidence filed by the applicant, the representation including the statement and evidence filed by the opponent, submissions made by the parties, and after hearing the parties, if so requested, the BENCH may either reject the representation or require the complete specification and other documents to be amended to his satisfaction before the patent is granted or refuse to grant a patent on the application, by passing a speaking order to simultaneously decide on the application and the representation ordinarily within one month from the completion of above proceedings.

Amendments to Schedules

Amendment I

The point 48 and 49 have been added sections 48A and 49A

THE FIRST SCHEDULE

amend_49

 

amend_48

Amendment II

In Form 18A, for para 3, the following shall be substituted, namely:-
Form number 18, sub point 3 will be replaced as shown below in highlight.

FORM 18A

amend3

Amendment III

In the Note portion of Form 18A, the following shall be added, namely:

“Form 28 is to be mandatorily submitted if applicant avails expedited examination under any of the clauses (b) to (f) of sub-rule (1) of rule 24C”

Form number 28, sub point 2 will be added points iii, iv, & v as shown below in highlight.

FORM 28

amend4

Conclusion

Hence all these amendments have been proposed by the Department of Industrial Policy and Promotion. These rules may be called the Patents (Amendment) Rules, 2018. These draft rules have been published in the official Gazette and notice is hereby given that the said draft rules will be taken into consideration after the expiry of a period of thirty days from the date on which copies of the Gazette of India, in which this notification is published, are made available to the public. Hence in order to submit and objections or suggestions, if any, may be addressed to Shri Sushil K Satpute, Director, DIPP, Ministry of Commerce and Industry, Government of India, Udyog Bhawan, New Delhi-110011 or by e-mail at sushil.satpute@nic.in. The objections and suggestions, which may be received from any person with respect to the said draft rules before the expiry of the period so specified, will be considered by the Central Government.

 

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

Growing efficiency of Patent Prosecution in India – Comparative Study (2015 through 2017)

Patents have been a very functional and important aspect of Intellectual Property Rights (IPRs). They are also one of the oldest laws of IPR that have been prevalent in India since 1856. However, after lot of repeals and amendments, the final draft was introduced as Patent Act, 1970, which came into force in 1972. This Act and Patent Rules also went through a lot of amendments, the last amendment being in March -2016, in furtherance to the establishment of the National IPR policy.

One key objective of these developments in the IPR field has been to increase and strengthen the IPR laws, and also to enhance the procedure of Patent registration. However, these changes and amendments have not only given incentives to the inventors to get their works patented, but have also built up their faith in the administrative bodies (Patent office) that are involved in the grant/issuance of Patents.

As is known, the Indian Patent Office is spread over four locations, namely Delhi, Mumbai, Kolkata and Chennai that administer the laws concerning protection of inventions in the country by way of grant of exclusive rights in the form of Patents to the Applicants for a limited period.

Following are the charts of the First Examination Reports (FERs) that have been issued in the year 2015, 2016 and 2017.

graph1

 Fig 1: FER issued in 2015 against each category

graph2

Fig 2: FER issued in 2016 against each category

graph3

Fig.3: FER issued in 2017 against each category

graph4

Fig.4: Comparative graph showing FER issued during three years

By perusing the above graphs, it is quite evident that the offices have largely worked at par in the year 2015 and 2016. However, in the year 2017, Patent offices have shown considerable surge in the issuing of examination reports when compared to previous years. Therefore, it can be safely inferred that the recent amendments and developments in the Indian Patent laws have brought about a positive change in functioning of the Patent prosecution, thereby building trust and faith of the inventors as well as of Applicants who file their Patent Applications in India, thereby complying with the National IPR policy.

 

NUMBERS OF FERs ISSUED IN EACH PATENT CATEGORY (MONTHLY)

EVALUATION OF THE YEAR – 2015

graph5

Fig. 5 : Number of FERs issued in Electrical/Electronics Domain in 2015

graph6

Fig.6:  Number of FERs issued in Biotechnology Domain in 2015

graph7

Fig. 7: Number of FERs issued in Chemistry Domain in 2015

graph8

Fig. 8: Number of FERs issued in Mechanical Domain in 2015

 

EVALUATION OF THE YEAR – 2016

graph9

Fig. 9: Number of FERs issued in Electrical/Electronics Domain in 2016

graph10

Fig. 10: Number of FERs issued in Biotechnology Domain in 2016

graph11

Fig. 11: Number of FERs issued in Chemistry Domain in 2016

graph12

Fig. 12: Number of FERs issued in Mechanical Domain in 2016

 

EVALUATION OF THE YEAR – 2017

graph13

Fig. 13: Number of FERs issued in Electrical/Electronics Domain in 2017

graph14

Fig. 14: Number of FERs issued in Biotechnology Domain in 2017

graph15

Fig. 15: Number of FERs issued in Chemistry Domain in 2017

graph16

Fig. 16: Number of FERs issued in Mechanical Domain in 2017

As would be appreciated from the above charts, the number of FERs issued in 2015 in each category of patents i.e. electronics, Mechanical, Chemistry and Biotechnology as shown in Figs.5-8 is less than 500 Applications in each month, which is very low, considering that there are Four Patent Offices in India taking care of the geographical extent of the country. The graphs in Figs. 9-12 depict FERs issued in 2016, which shows moderate increase in the number of FERs being issued compared to 2015. It is pertinent to note that in the period of January to March 2017, the Offices showed the same performance as that of 2016. There were very few issuances of FERs in the month of April and May 2017 in all the four categories, probably due to implementation of the new Amended Patent Rules. However, the period from June to December 2017 has shown a huge rise in the number of Applications that has been examined by respective Patent Offices. The graphs, as provided in Figs. 13-16 show a considerable growth in the issuance of FERs as compared to the previous years. However, the efficiency of Delhi Patent Office and Chennai Patent Office has not increased significantly and these two offices seem to be largely consistent. The Mumbai Patent Office and the Kolkata Patent Office are positive examples of how the Patent Rule amendments have enhanced the competitiveness with respect to swift issuance of FERs.

 

        CONCISE COMPARISON OF ISSUANCE OF FERs in 2015, 2016 AND 2017

 

Group
2015
2016
2017
Electrical
7186
7179
19734
Biotechnology
1498
1512
4179
Chemistry
6563
5116
15088
Mechanical
4338
5406
12888
Total
19,585
19,213
51,889


graph17

In the year 2017, 51,889 Examination Reports have been issued, while in the year 2016 and 2015, 19,213 and 19,585 FERs were issued, respectively. Therefore, the Patent Offices have demonstrated more than 2.5 times improvement in its competitiveness in a single year.

 

GRANTED PATENT

graph19

Fig. 17: number of patents granted in biotechnological domain

graph20

Fig. 18: number of patents granted in Electrical domain

graph21

Fig. 19: number of patents granted in Mechanical domain

graph22

Fig. 20: number of patents granted in Chemistry domain

By looking at fig. 17, it can be observed, with respect to the Biotechnological domain, that in the year 2015, IPO has only granted 174 patent applications, whereas 2016 witnessed a growth of about 50%, which makes it issuance (grant) of 264 patents. But IPO showed tremendous growth in granting patent to 486 applications in the year 2017.

Fig. 18 depicts number of Patents granted in 2015, 2016 and 2017 in respect of Electrical Domain, which shows that Patents granted in the year 2015 and 2016 were at par with a little variance in number of granted Patents, which was 350 and 381, respectively. It is evident from the graph that the number of Patents granted in the year 2017 is twice of what was granted in the previous years, i.e. 652 applications.

Number of Patents granted in 2015, 2016 and 2017 in Mechanical domain has been provided in fig. 19. It is pertinent to note that IPO in the year 2017 has granted 2091 Patents which is 42% and 44% more than Patent granted in the year 2015 and 2016 respectively.

Further, Fig. 20 shows the number of Patent granted in the span of three years in the field of Chemistry, which clearly shows a progressive growth of the work of IPO from the year 2015 to the year 2017. It can be observed that IPO only granted Patents to 1176 applications in 2015, which increased to 1932 applications in the year 2016 and lastly IPO raised its bar to grant Patent to 2643 applications in 2017.

graph23

Fig.17 to 20-show number of Patents granted in 2015 to 2017 in each categories i.e. Biotechnological, Mechanical, Electrical and Chemistry. It can be observed that among all the three years, the number of patents issued was lowest in year 2015 followed by year 2016. Moreover, year 2017 has witnessed highest number of Patents that has been granted. This progressive growth of IPO in granting Patent hints towards a better and successful future in the field of invention and would be a strong incentive for inventors as well as foreign investors to invent and invest in India.

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

Importance Of India As A Target Country For Design Registration

India has witnessed a long journey since 2000, when its GDP at 46,214.68 crores INR started to rise phenomenally to almost five times, to around 2.26 Lakh Crore INR in 2016 [1]. Since contribution towards it can be traced back to three major sectors of economy, mainly, agrarian, manufacturing and service sector, it is reasonable to observe that growth must also have been observed in these individual sectors as well. Although it is true, but not all sectors displayed equal proportions of growth. Service sector paced forward, while manufacturing and agrarian sectors lagged behind. Since there is a little scope to add value in the agriculture sector, the onus of boosting the economy further falls upon the manufacturing sector.

With this concept in mind, under the banner of “MAKE IN INDIA” initiative [2], it was envisaged by the present Government to bring an increase in the share of manufacturing in the country’s Gross Domestic Product from 16% to 25% by 2022 by making sure that the sector ensures and endures a growth rate of 12-14% per annum over the medium term [3]. In order to support this vision, funds were mustered from every source possible and it is evident from the fact that cumulative Foreign Direct Investment (FDI) in India’s manufacturing sector reached US$ 73.70 billion during April 2017-December 2017 [4]. In wake of such heavy investments made, it is obvious to assume that the sector will observe some turbulence on the positive side.

Further, a lot of policy related measures have been taken in this regard, including improvisation   of   Intellectual   Property   (IP)   protection   measures   and   their   effective administration, including computerized work flow along with digital manuals that were made available to the applicants have streamlined the process. However, it can be observed that executive focus is highly customised with regard to different kinds of intellectual property rights. This opens up scope to find out the potential among those regarded as the underdogs.

Moving ahead, from a recent report from World Economic Forum on “Global Competitive Index – 2018” [5], India was placed at 40th position while Switzerland was placed at the top. On a comparative analysis, the score for Basic requirements section which comprises of Institutions, of which Intellectual Property protection is a part, India scores 4.4 points at 52nd position, while Switzerland is on the top with 6.6 points. The margin in both rankings as well as points is quite high, and steps taken to develop this domain can help to bring early signs of positive change.

                              

The domain of Intellectual Property is reasonably wide and is divided into two parts: copyright and industrial property. Copyrights generally do not require registration which makes it difficult to track and monitor. According to Article 1(2) of Paris Convention for Protection of Intellectual Property which reads as “The protection of industrial property has as its object patents, utility models, industrial designs, trademarks, service marks, trade names, indications of source or appellations of origin, and the repression of unfair competition” [6]. Industrial property refers to assets created primarily for the advancement of technology, industry and trade such as patents (inventions), industrial designs, trademarks, service marks, trade secrets and geographic indications of origin [7].

Industrial design (also interchangeably referred to as “Design” or “Design Patent”) recognizes creation new and original features of new shape, configuration, surface pattern, ornamentations and composition of lines or colours applied to articles which in the finished state appeal to and is judged solely by the eye [8].

A Design, under Section 2(d) of The Designs Act, 2000 [9] refers to the features of shape, configuration, pattern, ornamentation or composition of lines or colours applied to any article, whether in two or three dimensional (or both) forms. This may be applied by any industrial process or means (manual, mechanical or chemical) separately or by a combined process, which in the finished article appeals to and judged solely by the eye.

Design does not include any mode or principle of construction or anything which is a mere mechanical device. It also does not include any trade mark as defined under Section 2(l) of The Trade Marks Act, 1999 [10] or any artistic work described under Section 2(c) of The Copyright Act, 1957 [11]. Also, property marks as defined under Section 479 of Indian Penal Code, 1860 [12] will be excluded from the scope of design.

If the design is not new or original, or cannot be distinguished from the existing design or combination of such designs or contains scandalous or obscene matter, the such design shall not be registered. Further, a design is barred from registration if it has been disclosed to public prior to the filing date.

The registration of a design, under Section 11(a) confers upon the registered proprietor the exclusive right to apply a design to the article in the class in which the design has been registered. This implies conversely that no right exists of any proprietor of a design that has not been registered, and hence cannot be enforced in the Court of Law against any such infringer. A registered proprietor of the design is entitled for protection of his intellectual property. He can take step against infringement, if his right recognised by law is infringed by any person. He can license or sell his registered design as legal property for a consideration or royalty. Registration initially confers this right for ten years from the date of registration, with a further extension of five years. The right expires if extension for registration is not applied for within stipulated time.

Hence, non – registration possesses a potential loss of any enforceable right against the infringer, as a risk management tool. Moreover, the fee charged for registration seems to be reasonable keeping in view the rights protected by it for a period of about fifteen years. For instance, it takes around INR 1000 for registration of a design [13]. And if a design is meant for industrial production, it must provide returns greater than the registration fee, which is again quite possible.

However, in the absence of any registration for a given design, the design is vulnerable to piracy and proprietor stands to lose market as well as profit share at his/her own expense. An estimate of losses can be observed by drawing inference from the fact the total international trade in counterfeit and pirated goods is estimated to value around half trillion USD [14] with around half of it effecting the industries that could have been protected under designs act. The business of piracy and counterfeit goods also result in employment losses of 2.5 million, with a total global economic and social cost, when estimated liberally seem to touch around a trillion USD. Also, it is assumed for UK market that it may lead to displacement of more than half of the market share of genuine products. In India, it is responsible for eating away a market share of 30% with estimated losses of 9000 crores INR to Auto components market alone with total loss accruing among seven prominent sectors was estimated to be around 73000 crores INR [15].

It is worth mentioning that out of 24898 applications filed, design registrations at about 2935 account for only one – eighth of the total share in comparison with 9584 patents granted in the year 2016 – 2017 [16]. This itself talks about the scope in increase of design registration as it is completely product based, and product are re – modified and re – designed in order to maintain their demand in the market.

                   

For the purpose of registration of a design, the procedure is carried out in accordance with Rule 10 of The Design Rules, 2001 which deals with the classification of goods with respect to which registration of design has to take place. There are 31 different classes with Class 99 which is a miscellaneous class and includes all products not included in previous classes.

Any contravention of The Designs Act, 2000 by the infringer will impose a liability to pay to a registered proprietor a sum of up to twenty – five thousand rupees under contract debt. Further, if a suit is brought, damages valuing up to fifty – thousand rupees along with injunction can be prayed.

India, on the other hand is a huge promising market, being placed at number 3 due to its sheer size, and hence can act as an attractive site for design registration. When collaborated with the vision of transforming the nation into a highly industrialised manufacturing hub. This is further consolidated by when it is observed that top corporate applications are lined up for the purposes of registration. Also, the design registration is available to foreign players who wish to enter and exploit the open Indian market. Further, Indian manufacturers must also make sure that their designs are not only protected by The Designs Act, 1999, but also by the design law of those economies where they wish to sell their product. The registration under The Designs Act is an effective and cost – friendly risk management tool for both domestic as well as foreign players and hence should not be avoided at any cost.

Author:  – Madhur Tulsiani, Intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at paras@khuranaandkhurana.com.

References:

[1] https://data.worldbank.org/indicator/NY.GDP.MKTP.CD

[2] http://www.makeinindia.com/policies

[3] http://www.makeinindia.com/policy/national-manufacturing

[4] https://www.ibef.org/industry/manufacturing-sector-india.aspx

[5]http://www3.weforum.org/docs/GCR2017_2018/05FullReport/TheGlobalCompetitiveness

Report2017%E2%80%932018.pdf

[6] http://www.wipo.int/edocs/lexdocs/treaties/en/paris/trt_paris_001en.pdf

[7] http://www.wipo.int/edocs/pubdocs/en/patents/867/wipo_pub_867.pdf

[8] http://www.ipindia.nic.in/designs.htm

[9] http://www.ipindia.nic.in/writereaddata/images/pdf/act-of-2000.pdf

[10] http://www.ipindia.nic.in/writereaddata/Portal/IPOAct/1_43_1_trade-marks-act.pdf

[11] http://www.copyright.gov.in/Documents/Copyrightrules1957.pdf

[12] http://ncw.nic.in/acts/THEINDIANPENALCODE1860.pdf

[13] http://www.ipindia.nic.in/writereaddata/images/pdf/rules-2001.pdf

[14] https://cdn.iccwbo.org/content/uploads/sites/3/2017/02/ICC-BASCAP-Frontier-report-2016.pdf

[15]https://cdn.iccwbo.org/content/uploads/sites/3/2016/11/Counterfeiting-piracy-and-smuggling-in-India-Value-of-IP-in-india.pdf

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

TATTOOS AS INTELLECTUAL PROPERTY- AN INDIAN PERSPECTIVE

INTRODUCTION:

Tim Parks in his book[1] wrote “You will only have copyright in a society that places a very high value on the individual, the individual intellect, the products of individual intellect.” In an overtly aware society like ours, there is no doubt that we not only value but are also more aware of our rights. In addition to our awareness, there is something else that is more peculiar about present times – our curiosity and our need to keep evolving with time. With this constant need for metamorphosis, our technology and art forms also are changing at a rapid scale, leading to the foundation and formation of various industries emerging from them including the Tattoo industry. This body graphics phenomenon, while may seem to have gained popularity very recently, has its roots inked all the way back in CA. 8000 BP where a ‘moustache’ was found tattooed on the upper lip of the South American Chinchorro mummy[2]. With the tattoo industry growing to become a $1 Billion industry[3], the legal framework to regulate this industry seeks evolution as well. With tattoos, the questions that need to be put to rest seem quite fundamental, beginning with – Do we have adequate laws and the legal framework to regulate and enforce the rights relating to tattoos? Are tattoos artistic enough to be copyrightable at all? If yes, who owns the rights? What is the extent of these rights? How do we enforce them?

This article tries to explore the answers to these questions while making an attempt to understand tattoo related jurisprudence across the world in comparison with current legal framework in India and its possible interpretations.

TATTOO – A COPYRIGHTABLE WORK?

Since copyrights are rights granted to artistic forms of expression on tangible mediums, tattoos ought to qualify, for copyright protection. Unlike in U.S. where the applicable statute[4] requires the “pictorial, graphic and sculptural” copyrightable work to be “original works of authorship fixed on a tangible medium of expression”, Indian law does not explicitly specify the need for tangible medium of expression. However, owing to the permanent nature of the tattoos and the human body being the “tangible medium of expression”, the reservations against tattoo not being copyrightable work, by definition, should be ruled out.  As if to prove Indian Copyright Office’s validation of tattoos as copyrightable works, the Indian Copyright Office, in 2011, granted Shahrukh Khan a copyright registration for his tattoo[5]. While there has not been a copyright infringement case for tattoos as yet in India, the news of the Warner Bros. making use of an unauthorized tattoo in their movie Hangover 2 in 2011 and then, being sued by the tattoo artist from Missouri[6] made quite a stir and has had the legal community thinking of the ramification of making the tattoos a copyrightable commodity. Though the case was discreetly settled, the million dollar question is still being debated as to who shall reap the benefits of the tattoo and can the standard injunctive damages apply, as they apply for paintings, books or other works of art.

To understand the applicability of copyrights to tattoos, one must recognize that it is only original and custom made tattoos that are the subject of this discussion. Standard tattoo in catalogues or on the walls of parlours are not to be considered thereto. Of all the ingredients, originality is the principal ingredient, without which a copyright does not exist. Having said that, the efforts made by the tattoo artists in inculcating the imagination of the tattoo bearer are worth marvelling about, it must be understood that if the copyrights of a tattoo are to remain in the possession of the tattoo artist, the rights to exploit the copyrighted ‘piece of art’ also rests with them. Among the various other rights of the copyright holder mentioned in the Indian Copyright Act, 1957, Section 14(c) (ii) specifies that the copyright holder has the right to communicate the piece of work to the public. It must be noted that this provision relating to the communication of the artistic work to the public speaks of ‘artistic work’ only implying that tattoo artist is entitled rights only of the “artistic work” i.e. the tattoo bearer’s body that has been imprinted with the tattoo while allowing the artist to restrict the replications of the artistic work in any other medium under Section 14. Thus, one may imagine the way in which a copyright holder, in this case the tattoo artist may incorporate the above mentioned right, considering that the ‘work of art’ which is to be communicated to the public is actually on somebody else’s body, unless the tattoo artist has tattooed himself. In other words, it may mean that the tattoo artist has the right to control and regulate the tattoo bearer’s activities which, by all means, violates the very right to freedoms promised to us by Art.19 and Art.21 of the Indian Constitution, to say the least. Another argument in the favour of the tattoo bearers holding the authorship rights is that the tattoo artist is a hired employee, in which case, S.17(c) of the Indian Copyright Act, 1957 may be interpreted as the tattoo bearer being a quasi-employer of the tattoo artist, is the first owner of the copyright, in the absence of a contract between the two. In practice, most tattoo artists, too, believe that once the customer pays for the tattoo, he owns the tattoo and all the rights that come with it.

In the defence of the tattoo artists’ rights to obtain the copyright, it may be said that like painters, they, too, create art and have a right to copyright the same to retain their originality. Also, as in the case of art collectors, the tattoo bearer may merely own the piece of art and the copyrights of the designs may still rest with the tattoo artist and certain amount of royalty may be reimbursed to the artist for replication or incorporation of this piece of art on various mediums such as video games, as in case of THQ Inc.[7], where the gaming company was sued by Mr. Conduit’s tattoo artist for illegally and wrongfully using the mixed martial artist’s tattoo in the game. Taking a leaf from so many cases of tattoo artist’s suing gaming[8] and entertainment companies[9], and also having burnt its fingers once[10], EA Games played it safe by taking permission from the tattoo artists of the respective sportsmen before using their work in their new NFL 15[11].

TRADEMARKING TATTOOS :

Quintessentially, the function of a trademark is to distinguish one’s services or goods from the others selling or providing similar goods or services. So when one gets a trademark or logo tattooed on himself or herself, given the aforesaid logic, the chances of them intending to confuse any member of the public of being the originator of any particular goods or service are rare. However, in some organizations, employees are encouraged to get tattoos of the organization’s logos or taglines[12].

On the other hand, in some cases, one might end up welcoming a cease and desist notice for tattooing a trademark without prior permission, like in the case of a coffee shop owner in New York who was slapped with a cease and desist notice for infringing the trademark “I ♥ NY” for tattooing “I [coffee cup] NY” on his knuckles. [13] The coffee shop owner, in this case, to avoid litigation, settled and agreed to certain terms of the said rightful owner that included restrictions on having his tattooed knuckles photographed and censoring of the cafe’s logo, which happened to be the tattooed knuckle, from the window pane of his coffee shop. While it is essential to note here that not only was there no direct trademark infringement but also the coffee shop owner had not copied the design of the logo as it is. He had introduced the image of a coffee mug instead of the “♥” which could be proved as distinctive form of expression and could have stood his ground pointing the difference in the tattoo design from the allegedly infringed logo. Having said that, like the idiom “every coin has two sides”, every legal argument can be fought from both the sides as well, making this jurisprudence ever so interesting.

CONCLUSION:

There seems to be crystal clarity, with the Warner Bros. case[14] verdict and Shahrukh Khan’s tattoo[15] being granted copyright registration, that tattoos are indeed copyrightable property. The variable in the equation, however, is the extent of the rights that are to be granted to the parties and its enforceability. While the moral rights like endorsing the tattoos in the name of the tattoo artists and giving them their credits when they are due, are undoubtedly implicit, the debate that needs to be put to rest is the statutory rights that are to be bestowed on either party.

Another question that needs the legal community’s immediate attention is the enforceability of these rights once they are granted. In order to protect and execute these rights, we are in need of a strong precedent that will define the limit the extent of injunctive relief that may be sought by the copyright holders without violating the infringer’s fundamental rights. With a Catch-22 situation before us and no binding precedent to break this deadlock, one can see only two definite possibilities – either the tattoo artists are granted their much earned and awaited royalties for every picture, endorsement, and social media coverage given to their art, or the conscious tattoo bearers is to carry fresh, newly drafted contracts for their tattoo artists to have their rights assigned to them every time they enter a tattoo parlour!

Author: Amruta Mahuli, Legal Associate at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at mumbai@khuranaandkhurana.com.

References :

[1] Where I’m Reading From: The Changing World of Books

[2] https://www.researchgate.net/profile/Aaron_Deter-Wolf/publication/275023614_The_Material_Culture_and_Middle_Stone_Age_Origins_of_Ancient_Tattooing/links/552ecd7f0cf2d495071a90b1/The-Material-Culture-and-Middle-Stone-Age-Origins-of-Ancient-Tattooing.pdf?origin=publication_detail

[3] https://www.ibisworld.com/industry-trends/specialized-market-research-reports/consumer-goods-services/personal/tattoo-artists.html

[4] 17 U.S. Code § 102

[5] http://archive.indianexpress.com/news/srk-registers-don-2-tattoo-in-his-name/817871/

[6]  S. Victor Whitmill Vs. Warner Bros., Civil Action No. 4:11-cv-752

[7]  Christopher Escobedo v. THQ Inc., Case No.: 2:12-cv- 02470-JAT, U.S. District Court, District of Arizona (Phoenix)

[8] Solid Oak Sketches, Llc V. 2k Games, Inc., U.S. District Southern District Of New York, No. 16-00724.; http://mitchellhamline.edu/wp-content/uploads/sites/37/2015/11/2-Copyrighting-Tattoos-Artist-vs.-Client-in-the-Battle-of-the-Wai.pdf

[9] Reed v. Nike, Inc, No. 05-CV-198 BR (D. Or. Feb. 10, 2005); http://www.brinksgilson.com/files/190.pdfl; Ibid. 5

[10]  Stephen Allen v. Electronic Arts Inc. et al., Case No.: 5:12-cv-03172, in the U.S. District Court for the Western District of Louisiana.

[11] http://www.barstoolsports.com/dmv/ea-sports-got-permission-from-colin-kaepernicks-tattoo-artists-to-use-his-ink-in-madden-15/;

[12] http://newsfeed.time.com/2013/05/02/employees-get-tattoo-of-company-logo-for-pay-raise/; http://www.bbc.com/news/business-28207945

[13] http://theconversation.com/who-owns-your-tattoo-maybe-not-you-56050

[14] Ibid. 4

[15] Ibid. 3

INDIA’S PROTECTION TO SECRETS OF TRADE

  1. Introduction

The global econoamy is trending towards an era of protectionism as can be seen from policies such as “Make America Great Again” and “Make in India”, thereby increasing the significance on exports and the manufacturing sector. As a corollary effect, the importance of Intellectual Property (IP) protection also increases due to the need to extend such to exports for its proper commercialization. On April 28, 2017, the Office of the United States Trade Representative (USTR) released the 2017 “Special 301” Report[1] which reviews global developments on trade and intellectual property (IP). The USTR placed India on the Priority Watch List and one of the reasons for doing so was an outdated and insufficient trade secrets legal framework.[2] It is pertinent to note that the so called Special 301 Report has vested interests of corporate lobbying from the likes of PhRMA (Pharmaceutical Research and Manufacturers of America), Business Software Alliance (BSA) and Intellectual Property Owners Association (IPOA). This piece will attempt to analyse India’s approach to trade secrets protection and its adequacy in terms of business.

  1. What are Trade Secrets?

Trade secret is a formula, process, device or other business information that is kept confidential to maintain an advantage over the competitors. It is the information which includes formula, pattern, compilation, programme, device, method, technique, or process, that derives independent economic value from not being generally known or readily ascertainable.[3] Therefore, the ingredients of trade secrets are- (a) it is such information not generally known to the public which in turn confers economic or commercial benefit through the maintenance of confidentiality and exclusivity, and (b) it is subjected to reasonable efforts of secrecy since disclosure would result in undue enrichment of others. For example, Coca-Cola’s formula for its aerated drinks and KFC’s recipe for its delicious fried chicken are considered to be trade secrets which have been preserved for many decades.

  1. Interface with Intellectual Property?

Article 1(2) of the Agreement on Trade Related Aspects of Intellectual Property Rights (“TRIPS Agreement”), states that intellectual property shall include protection of undisclosed information.[4] Article 39 of the TRIPS Agreement states that in the course of ensuring effective protection against unfair competition as provided in Article 10bis of the Paris Convention, with respect to information which is (a) a secret not generally known or readily accessible, (b) has commercial value by virtue of secrecy, and (c) has been subjected to reasonable steps for ensuring its secrecy, Member nations are to ensure that natural and legal persons have the possibility of preventing such information, within their control, from being disclosed to, acquired by, or used by others without their consent, in a manner contrary to honest commercial practice. It is submitted that the possibility referred to hereinbefore implies that trade secrets should be accorded protection within the legal system and not necessarily in the IP legislative framework of the said Member nation.

  1. India’s Policy Approach

The 1989 GATT (General Agreement on Tariffs and Trade) discussion paper[5] of India sets out that as per India, trade secrets cannot be considered to be intellectual property rights, because while the fundamental basis of intellectual property right rests in its disclosure, publication and registration, trade secrets are premised upon secrecy and confidentiality. It may be noted that disclosure and publication are necessary before according the protection of exclusivity when viewed from the IPR context since the prosecution stage involves challenges and objections which test the grant of said exclusivity. The paper further goes on to state that the observance and enforcement of secrecy and confidentiality should be governed by contractual obligations and the provisions of appropriate Civil Law but not by intellectual property law.

On May 12, 2016 India approved the National IPR Policy with seven objectives and elaborative steps to be undertaken by the identified ministries/departments. One of these objectives was to ensure an effective legal and legislative framework for the protection of IPRs. The steps outlined to be taken towards attaining this objective include, among other things, identification of important areas of study and research for future policy development, and one such area identified was the protection of trade secrets.[6] Hence it may be noted that India has taken a step towards considering the protection of trade secrets under the ambit of IPR protection.

Subsequently, the U.S.-India Trade Policy Forum held on October 20, 2016 in New Delhi included a meeting of the High-Level IP Working Group, a side-event on trade secrets, and several notable consensus outcomes related to promoting IP. India announced that it has taken important initiatives and steps, designed to enhance trade secrets protection in India, showing India’s strong commitment towards the importance of trade secrets protection. These initiatives and steps include the following:

  • A workshop was convened with government officials, academics, legal experts and representatives from U.S. and Indian industry that facilitated the exchange of information and best practices on trade secrets protection in both countries;
  • India noted that it protects trade secrets through a common law approach;
  • A toolkit would be prepared for industry, especially SMEs, to highlight applicable laws and policies that may enable them to protect their trade secrets in India;
  • A training module for judicial academies on trade secrets may also be considered;
  • A further study on various legal approaches to protection of trade secrets will also be undertaken by India.
  1. India’s Common Law Approach

The Delhi High Court in American Express Bank Ltd. v. Priya Puri,[7] defined trade secret as formulae, technical know-how or a method of business adopted by an employer which is unknown to others and such information has reasonable impact on organizational expansion and economic interests. Indian courts have approached trade secrets protection on the basis of principles of equity, action of breach of confidence and contractual obligations.

  • Equity

In John Richard Brady v. Chemical Process Equipments P. Ltd.,[8] it was held that independent of an underlying contract or in the absence of one, he who has received information in confidence is not allowed to take unfair advantage of it. This lays down that undue enrichment at the expense or detriment of another goes against the tenets of equity and fairness which need not be dependent on contractual obligations.

  • Breach of Confidence

In Zee Telefilms Ltd. v. Sundial Communications Pvt. Ltd.,[9] it was laid down that in an action of breach of confidence, the obligation of confidence is not limited to the original recipient but also extends to those persons who received the information with knowledge acquired at the time or subsequently that it was originally given in confidence. In Diljeet Titus v. Alfred Adevare & Ors, it was held that the Court must step in to restrain a breach of confidence independent of any right under law and that such an obligation need not be expressed but be implied and the breach of such confidence is independent of any other right. Therefore, it is submitted that the protection of trade secrets does not always necessarily stem from the owner of such secret having a right per se in respect of the same but from the implied obligation to maintain confidence by virtue of the nature of trade secrets in general.

  • Contractual Obligations

In Niranjan Shankar Golikari v. Century Spinning[10], it was held that negative covenants in employment agreements pertaining to non-disclosure of confidential information operative during the period of the contract of employment and even thereafter, are generally not regarded as restraint of trade and therefore do not fall under Section 27[11] of the Contract Act, 1872 as a former employee should not be allowed to take unfair advantage of the employer’s trade secrets which are vital for business. Post service restraint in maintaining confidentiality and also carrying on any other business for a limited period is permissible under the exception to Section 27 of the Contract Act, as was held in Homag India Pvt. Ltd. v. Mr. Ulfath Ali Khan.[12]

  1. Conclusion

It is submitted that as explained hereinabove, the common law trinity of equity, breach of confidence and contractual obligations for the protection of trade secrets is well suited to business requirements in India. India’s position should not be mistaken to connote that there is insufficient protection accorded to trade secrets and confidential information in the country. In fact, it must be clarified that Intellectual Property may not be the correct form of protection accorded to trade secrets. Trade Secrets rely on their nature of secrecy which precludes the quid pro quo disclosure required by the State before granting a statutory right of monopoly. Moreover, secrecy prevents the subject matter from being tested with regards to the scope of “has commercial value” and “has been subjected to reasonable steps of secrecy”. It is also pertinent to note that statutory enactment may not be sufficient to define the scope of what constitutes trade secret and protection thereof which could be more adequately handled on a case to case basis by the common law approach. It would be apposite to mention that legal proceedings and pleadings pertaining to trade secrets should be based on high modicum of confidentiality to protect the nature of the information as such.]

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

References :

[1] Available at https://ustr.gov/sites/default/files/301/2017%20Special%20301%20Report%20FINAL.PDF

[2] In the International IP Index, 2017 released by the U.S Chamber of Commerce, India was ranked 43 out of 45 countries in terms of the IP regime existing in the said countries; available at https://www.uschamber.com/event/2017-international-ip-index-the-roots-innovation

[3] Black’s Law Dictionary, Ed. 8, cited in Bombay Dyeing & Manufacturing Co. Ltd. v. Mehar Karan Singh, 2010 (112) BOM LR  3759.

[4] All categories of IP that are the subject of Part II, Sections 1 to 7 of the Agreement; Section 7 is titled as “Protection of undisclosed information”.

[5] MTN.GNG/NG11/W/37.

[6] Paragraph 3.8.4, National IPR Policy, 2016.

[7] (2006) HI LLJ 540 (Del).

[8] AIR 1987 Delhi 372.

[9] 2003 (27) PTC 457 (Bomb).

[10] AIR 1967 SC 1098.

[11] Agreement in restraint of trade is void.

[12] M.F.A. No. 1682/2010 C/W M.F.A. No. 1683/2010 (CPC) decided on 10.10.2012, Karnataka High Court.

Headline: Dealing with John Doe Orders in India

Standfirst: In an effort to reduce piracy, the media and film industries are increasingly seeking John Doe orders against internet service providers, illegal unlicensed distributors and cable operators, say Amruta Mahuli, Abhijeet Deshmukh and Abhishek Pandurangi of Khurana and Khurana.

Pullquote:

“The injunctions on blocking of entire websites ought not be granted ‘unless it is demonstrated that the entirety of the website contains, and contains only, illicit material’.”

 

With one of the largest multimedia industries and consumer bases in the world, India’s media law jurisprudence has always attracted interest. Accordingly, in 2003 Indian finally entered the “John Doe orders era”, or the “Ashok Kumar orders era” as it is referred to in the Indian Judiciary context.

In 2003 the Delhi High Court in the case of Taj Television & Anr v Rajan Mandal & Orsfor the first time passed an exparte interim order allowing the plaintiff to search and seize equipment and devices of unknown defendants, thus starting the jurisprudence of passing orders against John Does/Ashok Kumars. While the Taj Television judgment was considered sketchy when it came to the implementation and formulation of directions for execution, the Indian courts have, in the past decade, evolved to deal with IP infringement instances.

Legislative background

The John Doe orders jurisprudence in India is still considered in its developing phase wherein the Indian judiciary and legal system are making a conscious effort to improve and evolve their laws with technology. John Doe orders in India are governed by Order 39,rules 1 and 2 of the Civil Procedure Code, 1908 (CPC), read with section 151 of the CPC and the provisions of the Specific Relief Act,1963 related to permanent injunctions.

Therefore, as prerequisites to procure John Doe orders, plaintiffs need to prove the prima facie case, with the balance of convenience and potential damage, while establishment of proprietary rights of the owner is mandatory. The Indian courts often rely upon the following John Doe order factors in the 2003 case Bloomsbury Publishing Group v News Group Newspapers:

“First, the claimant needs to demonstrate that he has a good arguable case against the defendant. The stronger the order, no doubt the stronger that case should be. Second, the order has to be in terms which clearly state what the defendant must and must not do. Third, it must be possible to identify the defendant against whom the order is sought. Fourth, it will only be effective against a person who, when made aware of the terms of the order, will understand that it applies to him.”

Having said that, there are certain intricacies involved, such as execution of orders in the light of technical limitations, and jurisdiction issuesaround the name of John Does identified merely on the basis of a numerical IP address, which may not actually fall within the court’s jurisdiction.

Implementing John Doe orders

In an effort to reduce piracy and its menace, the booming media and film industries have welcomed this change with a warm embrace, seeking John Doe orders for numerous movies against internet service providers (ISPs), illegal unlicensed distributors and cable operators.

On the other hand, some Court dictums have also attracted criticism for their overreaching effect. Such was the case in Star India v Sujit Jha and Ors, where the Delhi High Court passed a pre-emptive order to block 73 websites in their entirety meeting out the prayer by the plaintiff under the guise that: “It is extremely easy for the website to provide access to the blocked content through another URL since a mere change of a character in the URL string will result in a completely new URL.

“Consequently, it is extremely easy for a website to circumvent and thus nullify any order that directs blocking of specific URLs since such websites can very easily provide access to the same content by merely changing one character in the URL string. Thus, unless access to the entire website of the named and unnamed defendants is blocked, there is no alternate and efficient remedy that is open to the plaintiff.”

On appeal, the Divisional Bench of the Delhi High Court narrowed the scope of the order by restricting the blocking of certain URL links rather than the entire websites, but a bit too late—only after conclusion of the relevant sports series.

On another front, the Bombay High Court set out the protocol for the execution of John Doe orders against ISPs in the case Balaji Motion Pictures & Anr v Bharat Sanchar Nigam & Ors. The plaintiffs in this case were directed to serve a public notice stating the crux of the case and order passed by the court to the defendants, thus providing “sufficient service” to the defendants allowing them a period of four days to apply against the grant of injunction.

Denying excessive and unreasonable requests by the plaintiffs against John Doe defendants in the Dishoom case, Justice Patel strongly dissented with the plaintiff’s plea for blocking of access to 134 URL links that mostly were web addresses for entire websites, thus engraving a strong precedent that the injunctions on blocking of entire websites ought not be granted “unless it is demonstrated that the entirety of the website contains, and contains only, illicit material”.

On the other hand, the concerns raised by Justice Singh in Star India regarding setting up of illicit links on a differently named website or on the same website under a hidden or misleading HTML link or tag do not appear far from the truth as well.

The plaintiff in most cases procures the said order with the hope of prohibiting piracy of its films through various portals such as popular streaming websites, while on the other hand, the ISPs complain of web policing; finding the right balance and setting out strong precedents is therefore what the Indian judiciary is currently focused on.

Judicial guidelines

In 2016, the Bombay High Court in the case Eros International and Anr v BSNL & Others extended the requisite guidelines, not just for the executing authorities but also for the jury and the plaintiff, to deal with unidentified defendants, especially ISPs and anonymous bloggers who violate the piracy laws.

The court has instructed copyright holders to verify and authenticate the allegedly illicit links prior to requesting their blocking, while advocates and general counsels are mandated to verify these links again. Last, enforcing Order 39,rule 1 of the CPC, the plaintiff is mandated to submit all the material before the High Court as an affidavit on oath.

The court also issued guidelines to be followed by the courts while issuing a John Doe order: they are advised to review the list and verify its authenticity or delegate a neutral third party to do so. The ISPs are instructed to display a message on the blocked webpage that includes the particulars of the case and reason for blocking, the address of the copyright holder and a statement that any aggrieved person, including the viewers, may approach the court with atleast 48 hours’ notice to the advocates of the plaintiff.

This judgment also narrowed the validity of the block to 21 days, after which the plaintiff would be required to approach the court and obtain an order for extension of the ban.

Policing guidelines

With more and more John Doe orders being sought by media houses, the reality of how badly the media industry is affected by such piracy is evident, but courts are pressing towards the balance against arbitrary and unreasonable relief. Plaintiffs may reasonably limit their request for the relief sought, and the legislative and executive authorities may take a step further and establish regulatory commissions to police selected websites that are suspected of some infringement rather than completely shutting them down.

In the case of Reliance Big Entertainment v Jyoti Cable Network & Ors, the court asked the police to assist the film production companies to curb piracy without any norms or guidelines, thus granting excess discretion for the enforcing authorities which may stand to Constitutional scrutiny.

While such judicial activity spells trouble for illicit web users and websites promoting piracy, there is a new market for online entertainment platforms and streaming services where one can stream videos at a nominal cost or in some cases no cost at all. Unlike sites where there is a risk of pirated videos being uploaded, these services stream only pre-recorded or live videos and have obtained requisite licences from distributors, thereby stifling piracy.

The substantial urban population in India, who once habitually streamed and downloaded videos, books and songs online from illicit sources, are now opting for the safe sources, which guarantee good quality. Indian society and courts are trying to travel away from piracy, and although the destination seems far away, quite a distance has been covered.

Authored by:

Amruta Mahuli is an Attorney-at-law at Khurana and Khurana. She can be contacted at: [mumbai@khuranaandkhurana.com]

Abhijeet Deshmukh is an Attorney-at-law at Khurana and Khurana. He can be contacted at: [abhijeet@khuranaandkhurana.com]

Abhishek Pandurangi is a partner at Khurana and Khurana. He can be contacted at: [ abhishekp@khuranaandkhurana.com]

India’s time to delve into IP laws

Shireen Shukla, legal intern at Kkurana & Khurana, probes the recent International IP Index report, released by U.S. Chamber of Commerce, where India stood at 43rd position, out of 45 countries.

On 8th February, 2017 U.S. Chamber of Commerce released its 5th annual International IP Index, “The Roots of Innovation,” rating 45 world economies on patents, trademarks, copyright, trade secrets, enforcement, and international treaties with the aim to provide both, an IP report card for the world and a guidebook for policymakers seeking to bolster economic growth and innovation.

It is an undeniable fact that protection of intellectual property serves dual role in the economic growth of a country. Where on one hand it promotes innovation by providing legal protection of inventions, on the other it may retard catch-up and learning by restricting the diffusion of innovations. Therefore a sounder IPR protection in a country encourages technology development and technology transfer from developed to least developed countries. Countries that would demonstrate a commitment to IP laws will only reap rewards.

Often we have seen that major companies and brands invest their money or open their outlets in another country only after seeing the soundness of their IP laws. This proves the role of IP laws and enforceability on the GDP of a country.

GIPC is leading a worldwide effort to champion intellectual property rights as vital to creating jobs, saving lives, advancing global economic growth, and generating breakthrough solutions to global challenges  (Reddy, 2017). The Index ranked the IP systems of 45 countries. Where on one hand United States was ranked number 1, India and Pakistan were ranked 43 and 44 respectively.

Image Source: U.S. Chamber International IP Index: http://www.theglobalipcenter.com/ipindex2017-chart/#

 

Some major facts from the IP Index:

  • A pack of global IP leaders emerged among the 2017 Index rankings, with the U.S., UK, Japan, and EU economies, ranked more closely together than ever.
  • Canada signed the Comprehensive Economic and Trade Agreement (CETA), which raised the bar for life sciences IP protection.
  • Russia introduced new forced localization measures.
  • Japan’s score increased by 10% due to ratification of TPP and accession to the Index treaties.
  • South Korea passed amendments to the Patent Law.
  • Uncertainty around software patentability, Section 3(d) of the Patent Law, and High Court copyright decisions in India continue to present challenges.
  • Indonesia’s Patent Law included a heightened efficacy requirement and outlawed second use claims.
  • South Africa introduced new local procurement policies.
  • UAE created a specialized IPR Court.
  • Indian government issued the National Intellectual Property Rights Policy in 2016.

India announced the much-awaited National IPR Policy in May 2016. This act proved to be a positive attitude to foster the IP laws in India. The Policy is a boon for the IP industry as it provides constructive ways and methods to improve IP administration. The policy has enumerated the importance to educate Indian businesses about IP rights.

The Policy makers realizing the real issue in hand, addressed a number of important gaps in India’s national IP environment, which included the need for stronger enforcement of existing IP rights through the building of new state-level IP cells and investing more resources in existing enforcement agencies; reducing processing times for patent and trademark applications; as well as the need for introducing a legislative framework for the protection of trade secrets

Major developments and landmark judgments in Intellectual property laws since 2015:

  • The Delhi high court on 7 October 2015, barred Mumbai-based Glenmark Pharmaceuticals Ltd from selling, distributing, marketing or exporting its anti-diabetes drugs Zita and Zita-Met,as they tentatively infringed the patent of US-based pharmaceuticals company Merck Sharp and Dohme Corp.
  • In March, 2016, the Delhi High court in the case of Ericcson v. CCI for the first time ever, considered at how IP law interfaced with competition law. It allowed Competition Commission of India (CCI) to continue its investigation into anti-competitive practices by Ericsson regarding use of its SEP’s by other companies such as Micromax and Intex.
  • National IPR Policy in 2016, released last year is entirely compliant with the WTO’s agreement on TRIPS.
  • Examination time for trademarks has been reduced from 13 months to 8 months in the 2016 policy.
  • Bombay HC passed a series of judgments cases (Phantm Films pvt, Ltd. v. CBFC & Anr; Eros International Media Ltd. & Another v. Bharat Sanchar Nigam Ltd.) laid down a strict agenda for the grant of John Doe orders leading to path breaking shift in the John Doe jurisprudence in India. The above-mentioned judgments are focused on balancing the interests of not just copyright holders but also the Internet users and innocent third party providers.
  • The judgment by Bombay HC in Eros v. Telemax, is a pioneer that unwrapped the scope of arbitration of IP disputes arising out of licensing and other commercial transactions.
  • In December 2016, the Delhi High Court in the case of Agri Biotech v. Registrar of Plant Varieties declared section 24(5) of the Plant Varieties Act unconstitutional. The court giving a momentous judgment stated that the section violates Article 14 as it gives unchecked powers to the Registrar. The registrar is not required to be from a legal background in order to grant interim relief to a breeder against any abusive third party act during the period its registration application is pending.This lead to arbitrary use of powers by the registrar.

Beside the above-mentioned developments and progressions, PM Narendra Modi’s “Make in India” initiative also aims to promoting foreign direct investment and implementing intellectual property rights. In these initiatives, the government has decided to improve the intellectual property rights for the benefit of innovators and creators by modernizing infrastructure, and using state of the art technology.

One of the most recent and effective change brought in the trademark rules was on 6th march 2017, where the number of trademark forms have been reduced from 74 to 8 with an aim of simplifying the process of trade mark applications. The new rules promote e-filling of the trademark applications. The fee for online filing of the application is 10 per cent lower than that of the physical filing.

Steps India can take to strengthen its IPR laws:

  • India should implement speedy examination and registration procedures.
  • It should take effective steps to achieve the target of one month (as stated in IPR policy 2016).
  • The number of patent examiners and trademark offices should be increased to improve efficiency and disposal speed.
  • Section 3(d) of India’s Patent Act 1970, relating to restrictions on patenting incremental changes should be amended. Norms relating ever greening should also be revised.
  • A new and revised IPR laws and policies should be implemented so as to make it compatible with IPR laws of WIPO, TRIPS and other major dominant countries like US & UK

Every fiscal year, enormous time and money is being invested on R&D to improve the existing status of the Intellectual property laws in India, to bring it at par with the IP laws of US. We hope by following the above guidelines and following the National IPR Policy, India’s position improves in the next International IP Index 2017.

References :

  1. Prashant Reddy, The Press Release Journalism Around the GIPC IP Index, February 13, 2017, < https://spicyip.com/2017/02/the-press-release-journalism-around-the-gipc-ip-index.html&gt; Last accessed: 28th February 2017
  2. Merck Sharp And Dohme Corporation. v. Glenmark Pharmaceutical, FAO (OS) 190/2013, C.M. APPL. 5755/2013, 466/2014 & 467/2014, (Delhi High Court) (20.03.2015)
  3. Telefonaktiebolaget LM Ericsson v. Competition Commission of India, W.P.(C) 464/2014 & CM Nos.911/2014 & 915/2014, (Delhi High Court) (30.03.2016)
  4. Phantom Films Pvt. Ltd. v. The Central Board of Film Certification, W.P.(L) 1529 /2016, (Bombay High Court) (13.06.2016)
  5. Eros International Media Limited v. Bharat Sanchar Nigam Limited, C.S. No.620 /2016 & O.A.Nos.763 to 765/2016 (Madras High Court) (25.10.2016)
  6. Eros International Media Limited v. Telemax Links India Pvt. Ltd., Suit no. 331 /2013, (Bombay High Court) ((12.04.2016)
  7. Prabhat Agri Biotech Ltd. v. Registrar of Plant Varities, W.P.(C) 250/2009, (Delhi High Court) (02.12.2016)

 

Expedited examination and non-expedited (normal) examination: Who can file request for examination?

With effect from May 16, 2016 (effective date for Patent (amendment) rules, 2016), provision of expedited examination was introduced in the Patent system of India. This article does not intend to discuss the different timelines within which request for examination has to be filed in different situations, rather article is restricted to the eligibility of person who can file such requests. Specifically, article intends to highlight the difference between person who is eligible for non-expedited examination and expedited examination.

Section 11B (1) of the Patent Act, 1970 provides that no application for a patent shall be examined unless the applicant or any other interested person makes a request in the prescribed manner for such examination within the prescribed period.

According to section 2 (t), interested person is defined as including a person engaged in, or in promoting, research in the same field as that to which the invention relates.

Rule 24 (B) and rule 24 (C) provide procedures for the non-expedited (normal) examination and expedited examination respectively.

Rule 24 (B) (3) provides that  applicant as well any interested person can request for non-expedited examination, however in latter case, only intimation is given to such interested person, and examination report is shared with the applicant only.

Rule 24 (C)(1) deals with eligibility of person who can request for non-expedited examination.

Rule 24 (C)(1):

An applicant may file a request for expedited examination in Form 18A along with the fee as specified in the first schedule only by electronic transmission duly authenticated within the period prescribed in rule 24B on any of the following grounds, namely:-

(a) that India has been indicated as the competent International Searching Authority or elected as an

International Preliminary Examining Authority in the corresponding international application; or

(b) that the applicant is a startup.

Rule 24 (C)(2) provides for conversion of non-expedited examination to expedited examination.

Rule 24 (C)(2):

A request for examination filed under rule 24B may be converted to a request for expedited examination under sub-rule (1) of rule 24C by paying the relevant fees and submitting requisite documents as required under sub-rule (1). (Emphasis added).

As seen in section 11 (B)(1), there is no categorical difference provided in the eligibility to request for expedited and non-expedited examination (that interested person cannot request for expedited examination). But there is no parallel sub-rule as like 24 (B)(3) in rule 24 (C) and also rule 24 (C)(1) also puts restriction of applicant.

However, what if interested person submits documents available in the public domain to convert a non-expedited examination to expedited examination (by paying the required fees)? Though it is not categorically given that it cannot be done, language of 24 (C)(1) which restricts eligibility to applicant and absence of parallel provision as like 24 (B)(3) in rule 24 (C)indicates that interested person cannot convert non-expedited examination to expedited examination even after paying fees and submitting documents available in public domain that a particular applicant is eligible for expedited examination.

However it would be interesting to see if Indian Patent Office (IPO) faces such question and how it tackles the same.

About the Author: Swapnil Patil, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at: swapnil@khuranaandkhurana.com.

REVOCATION OF PATENTS ACCORDING TO INDIAN PATENT ACT, 1970: INSIGHT

This article focuses on the revocation proceedings which is one of the mechanisms available for annulations of Patents in India.

  1. What is revocation of a patent?

When a patent has been sealed or granted, it is not always the case that the patent shall stay unhindered by any third party till the life of the patent. The patent can be challenged by certain people on different grounds, and a method to cause the same is by filing a revocation petition/ post-grant opposition proceedings. This article focuses on the revocation proceedings.

  1. Why does one file a revocation petition?

As the Patent Act does not presume Patents granted to be valid, rights granted on such Patents cannot be absolute. Third parties which are required to seek permission from Patentee for practicing any of the exclusive rights bestowed upon him are also given a chance to challenge the validity of the Patents. This challenge can be instituted on own as well as on Patentee asserting infringement of Patent rights.

  1. Who can file a revocation petition?

As per Section 64 of the Patent Act, 1970, the following persons can file the petition in the High Court:

  • any person interested[1];
  • the Central Government
  • the person making the counter-claim in a suit for the infringement of a patent
  1. Where can a revocation petition be filed?

Thus, a revocation petition can be filed in the Intellectual Property Appellate Board by the interested person or the Central Government, or it can be filed as a counter-claim in a suit for infringement at the High Court.

To bring in the aspect about jurisdiction of suits of infringement and the corresponding revocation petitions, Section 104 of the Patents Act, 1970 states that no suit of infringement can be brought before a court inferior to the District Court having jurisdiction to try the suit and in the event of a counter-claim for revocation of the patent made by the defendant, such suit for infringement and the said counter-claim must be transferred to the High Court.

  1. What are the grounds under which a revocation petition can be brought?

Under Section 64, the following are the said grounds:

  1. the invention, so far as claimed in any claim of the complete specification, was claimed in a valid claim of earlier priority date contained in the complete specification of another patent granted in India;
  2. the patent was granted on the application of a person not entitled to apply therefor;
  3. the patent was obtained wrongfully in contravention of the rights or the petitioner or any person under or through whom he claims;
  4. the subject of any claim of the complete specification is not an invention;
  5. the invention so far as claimed in any claim of the complete specification is not new, having regard to what was publicly known to publicly used in India before the priority date of the claim or to what was published in India or elsewhere in any of the documents referred to in Section 13;
  6. the invention so far as claimed in any claim of the complete specification is obvious or does not involve any inventive step, having regard to what was publicly known or publicly used in India or what was published in India or elsewhere before the priority date of the claim;
  7. the invention, so far as claimed in any claim of the complete specification, is not useful;
  8. the complete specification does not sufficiently and fairly describe the invention and the method by which it is to be performed, that is to say, that the description of the method or the instructions for the working of the invention as contained in the complete specification are not by themselves sufficient to enable a person in India possessing average skill in, and average knowledge of the art to which the invention relates, to work the invention, or that it does not disclose the best method of performing it which was known to the applicant for the patent and for which he was entitled to claim protection;
  9. that the scope of any claim of the complete specification is not sufficiently and clearly defined or that any claim of the complete specification is not fairly based on the matter disclosed in the specification;
  10. that the patent was obtained on a false suggestion or representation;
  11. that the subject of any claim of the complete specification is not patentable under this Act;
  12. that the invention so far as claimed in any claim of the complete specification was secretly used in India, otherwise than as mentioned in sub-section (3), before the priority date of the claim;
  13. that the applicant for the patent has failed to disclose to the Controller the information required by section 8 or has furnished information which in any material particular was false to his knowledge;
  14. that the applicant contravened any direction for secrecy passed under section 35
  15. that leave to amend the complete specification under section 57 or section 58 was obtained by fraud.
  16. that the complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention;
  17. that the invention so far as claimed in any claim of the complete specification was anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere.
  1. Does revocation restrict itself to Section 64?

It is important to note that section 64 does not restrict grounds to be used in revocation to only those provided in section 64 whereas section 25 (2) setting out grounds used in post-grant opposition proceedings is restrictive in nature.

  1. What are the other provisions concerning revocation?

Under Section 65, if a patent is claimed to be related to atomic energy, a revocation petition can be filed against it. Such patent shall not be granted under the Atomic Energy Act, 1962 and shall be revoked. Under Section 66, if the Central Government is of the opinion that a patent or the mode in which it is exercised was mischievous to the State or prejudicial to the public, after giving an opportunity to the patentee to be heard, it may make such declaration in the Official Gazette and the patent shall stand revoked.

Moreover in the Enercon (India) Ltd and Ors. v Enercon Gmbh (2014) 5 SCC 1 , it was laid down by the Supreme Court that when post grant opposition proceedings are instituted by a party, he cannot institute a revocation petition or counter-claim of revocation proceeding against the same patent.

  1. “‘Person interested’ under Section 64 would mean a person who has a direct, present and tangible commercial interest which is injured or affected by the continuance of the patent on the register. (Ajay Industrial Corporation v Shiro Kanao of Ibaraki City AIR 1983 Del 496)”

About the Author :  Ms. Anjana Mohan, Symbiosis Law School, Pune, intern at Khurana and Khurana, Advocates and IP Attorneys. 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. Queries regarding this may be directed to swapnil@khuranaandkhurana.com or swapnils@khuranaandkhurana.com.