Tag Archives: patent

Unpaid Patent Annual Fee Causes Huge Losses to Patent Office of Indonesia

Indonesian Patent Office has sent letters to 7600 patent owners in Indonesia in order to recover the unpaid annual fee along with Interest as soon as possible. It has come to notice that Rp 150 Billion ($12,000,000) is unpaid which has caused huge financial loss to the government. Most of the owners presented themselves as ‘Foreign entities’ on receiving the said letters.

Article 115 (1) of Indonesian Patent Law 2001 provides that a patent shall be deemed void, incase the patent owner fails to pay patent annual fee for consecutive 3 years.  Therefore, according to the said law, Thousand of Patents were abandoned by patent office due to non-payment. However, the patent owner can still clear the unpaid amount even tough patent is passively abandoned. Otherwise it will be consider as debt.

The Indonesian Directorate General of Intellectual Property Rights (DGIP) signed a Memorandum of Understanding (MOU) with the Indonesian Anti-Counterfeiting Society (MIAP) to handle this situation.

Indonesian Directorate General of Intellectual Property (DGIP) attempted to recover the debt in 2015; unfortunately the approach failed and did not succeed.

The DGIP has now taken strong decision of not accepting any new patent filing applications from the defaulter patent owners who have not cleared the pending debt of their previously filed Patents. The Indonesian patent office is determined to settle all such debt by 15.02.2019. This surprising move by DGIP has made patent holders worry and think whether the payment of the outstanding annuities will actually have any effect for the future patent applications by them.

Author: Ms. Deepika Sharma, Sr. Patent Associate at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at  deepika@iiprd.com.

References:

[1] http://www.managingip.com/Article/3335641/Indonesia-Unpaid-patent-annual-fees.html

[2] https://www.shelstonip.com/news/indonesian-patent-office-gets-tough-unpaid-fees/?utm_source=Mondaq&utm_medium=syndication&utm_campaign=View-Original

[3]http://www.iprlawbor.com/data/Newsletter%20June%202013%207th%20edition.pdf

Advertisements

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

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

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

                                                   tier2_image1

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

                                                   tier2_image2

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

                         tier2_image3          tier2_image4

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

Office Memorandum From Ministry Of Environment, Forest And Climate Change: A Much Needed Respite For The Bioscience Researchers And Companies

Biological diversity and ecosystem have always been global concerns, due to which various countries including India signed and ratified Convention on Biological Diversity (CBD). In order to meet the obligation under the said convention and furthermore to conserve the biological diversity as well as to provide mechanism for its sustainable use and equitable sharing of benefits arising out of the use of biological resources and knowledge, the Government of India introduced The Biological Diversity Act, 2002. The Act focuses on conservation of biodiversity, sustainable use of bio-resource and access and benefit sharing from the utilization of biological resources through a body called National Biodiversity Authority (NBA).

The Act regulates access to biological resources in diverse scenarios through its various provisions. Utilization of Indian biological resource or associated knowledge not only for commercial utilization but even for research, bio-utilization or bio-survey by non-resident Indians, foreigners, foreign companies, or Indian corporate with non-Indian participation is barred without prior approval of the NBA as per Section 3 of the Act. Even licensing of any research relating to biological resource from India to a foreigner, foreign companies, Indian corporate with non-Indian participation, or non-resident Indians can only be done after taking prior approval from the NBA under provision of Section 4 of the Act. Considering a wide scope of Intellectual Property, possibly with the intent of curbing bio piracy though this channel the Act under Section 6 also mandates a prior approval of National Biodiversity Authority for making an Application for IPR involving research on biological resource from India. Such approvals impose benefit sharing fee or royalty or both or impose conditions including the sharing of financial benefits arising out of the commercial utilization of such rights.

Awareness of such a statute however, is unfortunately not prevalent among much large section of public, which makes it one of the major factors of non-compliance of provisions mandated by this statute even if they are desirous of complying with the same. The Central Government has issued a notification on September 10, 2018, under section 48 of the Biological Diversity Act, 2002 to provide an opportunity to all such entities which required prior approval in past as per Sections 3, 4 and 6 of the Act and regulate these provisions in a manner that enhances implementation of the Act. This directive is not only in line with the objectives of the Act but enhances proper implementation of the Act, being one of the few targets the Government of India has set to achieve by 2020, (read here).

NOTICE F. N. C.- 12025/8/15-CS-III dated 10th September’ 2018

The Central government has taken note of all the provisions of the Act and by exercising powers under section 48 of the Act, has issued Office Memorandum (OM) directing the National Biodiversity Authority to hear all such cases where prior approval of NBA was required (including the cases which needs prior approval of NBA in IPR related applications such as Patent registration application based on research based biological resource of India but the person/entity has not obtained such approval.

It is required that the authority should hear such cases on the merits and take decision within a period of 100 days from the date of issuance of this Office Memorandum (OM). The NBA can pass appropriate orders in furtherance of the powers available to it under section 18 of the act for facilitating and enhancing implementation of the act in public interest toward meeting the objectives of the act such as conservation of biological diversity, sustainable use of its components and fair and equitable sharing of the benefits arising from use of biological resource. Also, the NBA is required to abide by the principles of natural justice and various judgments of Hon’ble courts while implementing the directions.

As per the OM, the National Biodiversity Authority shall also look into the judgment as well as intent and reasoning behind such ruling pronounced by various Honorable Courts in order to decide such case in an unambiguous and clear manner.

In one incident, The Ministry had issued a notification in respect of prior environmental clearance under the Environment Protection Act, 1986 wherein six months period was provided to apply for environmental clearance for projects on which the project proponent has started work on site, expanded the production beyond the limit of environmental clearance. The High court of Madras had vacated the stay on the notification in the matter of Puducherry Environment Protection Association v. Union of India saying that the protection of environment and prevention of environmental pollution and degradation are non-negotiable. One time relaxation is not impermissible in cases where projects are in compliance or can be made to comply with the pollution norms.

Similarly, with respect to requirement of prior forest clearance from Central government, the Hon’ble Supreme court in SC Monitoring Committee v. Massoorie Dehradun Development Authority held that it is required to forward the case to the central government for seeking ex-post facto approval. With respect to situations where fait accompli situation arose, SC in T.N Godavarman Thirumulpad v. Union of India did not interfere with the decision of MoEF granting site clearance. The court held that since fait accompli situation arose, there was no option but to recommend the case for grant of permission for the use of forest land for mining lease, conveyor belt system and associated activities. The Bombay HC in Vijay Krishna kumbhar v. The State of Maharashtra held that in situation where fait accompli arose, there is no alternative except to follow the action which has become fait accompli and take further actions in accordance with the government’s directions.

IP AND BIODIVERSITY

It is very clear from the above that the objective of the statute majorly is to provide equitable sharing of benefits arising out of the use of biological resources and knowledge and Section 6 of Biological Diversity Act mandates a prior approval from NBA before making an application for any intellectual property right in or outside India, for any invention based on any research or information on biological resources obtained from India. It is pertinent to mention that the aforesaid provision provides some relaxation to IPR application:

  • Provided that if a person applies for a patent, permission of the National Biodiversity Authority may be obtained after the acceptance of the patent but before the sealing of the patent by the patent authority concernedand

  • Provided further that the National Biodiversity Authority shall dispose of the application for permission made to it within a period of ninety days from the date of receipt thereof.

The statute also provides for penalty against any violation of this particular provision, which leads to imprisonment which may extend to 5 years, or fine up to Rs.10 lakhs (approx. USD 15500) or damages with fine.

Such Authority (National Biodiversity Authority) is a Statutory body that performs facilitative, regulatory and advisory function for Government of India on issue of Conservation, sustainable use of biological resource and fair equitable sharing of benefits of use and is established to ensure that the essential provision of the statutes are being implemented.

The Biological Diversity Act, 2002 mentions that permission from NBA is to be obtained before the sealing of the patent. Thus, it is observed that there was no conformity to the timelines in grant of permission from NBA for patent applications which are based on research or information on a biological resource obtained from India. However, despite of a statutory time limit of ninety days being provided to the NBA for grant of such permission to patent applicants, NBA takes many years in issuance of such permission, which directly and adversely affects the patent right of the applicant. Such delay in permission means that in case an applicant complies with all the requirements for the grant of the patent, the patent shall be pending until the permission from NBA is granted.

Moreover, very few stakeholders are aware of this provision and therefore fail to comply with this provision. On account of this, the Central Government issued the OM dated 10.09.2018. This notification would not only help in spreading awareness among people about such compliances but will also be able to help expedite the whole procedure of grant of approval by providing a specific time line of 100 days. This, notification also regularizes the procedure of the approval by NBA providing much respite to those persons/entities for obtaining the requisite approval without facing the harsh penal action for unintentional failure to comply the Act merely because of not being fully aware of the provisions of the Act.

The question pertains to what has to be done by the Patent examiner in cases where patent application in relation to biological resource has been made, before the issuance of such notification?

According to the provisions of Patent Rules, 2015, the Controller may pass an appropriate order in case where the applicant has not submitted necessary permission from the competent authority within the period as prescribed under Rule 24B and 24C in order to receive grant under section 21 of Patent Act.  

Rules 24B and 24C of the Patents Rules, 2003 mention that the time for putting an application in order for grant under Section 21 shall be four months from the date on which the first statement of examination is issued to the applicant to comply with the requirement extendable for a further period of 2 months. Thus, in case, NBA is unable to provide with such permission, by the time as prescribed under Rules 24B and 24C, the Controller has discretion to issue the “appropriate orders”.

Since, the two statutes i.e. Patent Act, 1970 and The Biodiversity Act, 2002 are directed towards different subject matter, thus, they are independent of each other and neither is bound to follow directions of each other.

The Notification issued by the Central Government providing for a specific timeline of 100 days for approval of any application regarding IPR shall be towards harmonizing the two procedures prescribed by the two statutes expediting grant of patent as well as implementation of the Biological Diversity Act.

The OM issued by the Ministry of Environment, Forest and Climate change thus is a huge and a productive taken up by the Government, which will also lead to an expedited grant of patent as an allied benefit.

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

Cross-Licensing Of Patents

Introduction

A cross-licensing contract between the two parties is an agreement where they grant patent licenses to each other. Such agreements, basically, involve exchange of essential patented knowledge between two parties who are seeking to further their own technological progresses.

The top players in every field, particularly the automobile, telecommunication, broadcasting and pharmaceutical industries are engaged with each other through cross-licensing contracts.

For example, Intel Inc. has several cross-licensing agreements with Advance Micro Devices Inc. (AMD).[1] Similarly, Google and Samsung have agreements that cover existing patents as well as those to be filed in the next 10 years from the dates of agreements.[2]

One of the main reasons why cross-licensing is prominent in patent transfers is that it guarantees both the parties the freedom to explore and exploit the opportunities in the same field without the fear of any conflict of interest or cumbersome litigation. The parties can achieve their interests in a peaceful quid-pro-quo manner.

Cross-Licensing Agreements and Patent Pools

A Patent Pool is an agreement between two or more patent owners to pool their patents and licenses amongst themselves or to a third party on pre-determined licensing terms. They work as a mechanism for collectively acquiring patent rights. Therefore, when more than two companies cross license their patents with respect to a particular technology, then a patent pool is formed.

Open Invention Network (OIN) is one such example of a patent pool which is built around the idea of sharing and developing the Linux operating system software among several industries. Here, companies that join OIN are provided with a cross-license to patents covering Linux system technologies which are either owned by other OIN members or OIN itself.[3]

The objective of a patent pool is to make patent licensing easily accessible, thus, incentivising innovation. What distinguishes patent pools from multilateral cross-licensing agreements is that in the former scenario, a third party who is unable to contribute any innovation can still reap the benefits of the pool by just being a member but in the later case, only the party to the agreement can reap the benefits as according to the agreement

By looking at the inherent ways in which both cross-licensing agreements and patent pools work, it is easy to understand that both these methods help in participants combating patent thickets.

There is no agreed definition of patent thicket. However, it can be broadly classified into the following scenarios:

  1. When multiple organisations own individual patents that are collectively necessary for a particular technology, in such cases their competing intellectual property rights form a patent thicket.
  2. Set of overlapping property rights occurring in fragmented technology markets.
  3. When too many patents covering individual elements of a commercial product are separately owned by different entities.[4]

Therefore, patent pools and cross-licensing agreement become effective ways to overcome the above situations as participants start creating networks that encourage sharing of technology and information.

Advantages of Cross-Licensing

Cross-licensing of patents offers various advantages to encourage innovation within markets to existing as well as new market players by-

  1. Ensuring mutual sharing of technology to improve products
  2. Lowering product development costs
  3. Boosting the development of the industry as a whole by creating IP sharing networks
  4. Reducing transaction costs
  5. Providing guarantee against upcoming patentable inventions
  6. Helping avoid cumbersome litigation involving infringement claims

Most recently, Smith & Nephew agreed to pay $10.5 million to settle and enter a cross-licensing agreement with Confor MIS, Inc. over a patent dispute.[5]

Disadvantages of Cross-Licensing

Though cross-licensing is appreciated for the advantages, it also poses few threats to the market players.

  • For existing members of the industry, the following are the disadvantages:
    1. Cross-licensing can become a way of enabling the competitor to imitate one’s own product.
    2. Depending on another party’s skills and abilities in order to make your own progress.
    3. Involvement of monetary clauses regarding royalties can deter them from mutually sharing their technology.
    4. Sometimes the competitors file infringement suits in order to arrive at a cross-licensing agreement promoting the culture of unnecessary and cumbersome litigation.
  • For the new players/start-ups:
    1. When the existing members of an industry already have cross-licensing agreements amongst themselves it creates legal barriers for new entrants to make any contributions.
    2. This, in turn, discourages any innovation these potential new players can offer.
  • For the industry as a whole, from an anti-trust viewpoint:
    Similar to patent pools, one major concern that cross-licensing agreements attract is that they tend to negatively affect the competition in the market by concentrating essential technological know-how amongst the leading companies. These agreement promote formation of cartels when they go unregulated.

    The Indian Competition Act, 2002 defines a cartel as an “an association of producers, sellers, distributors, traders or service providers who, by agreement amongst themselves, limit, control or attempt to control the production, distribution, sale or price of, or, trade in goods or provisions of services”.[6]

    When the adverse effects of cross-licensing agreements are not kept in check, it defeats the whole purpose of such agreement to foster innovation and development of the industry. Therefore, a stringent anti-trust legislation must be in place in order to ensure that such anti-competitive tendencies are addressed and penalised.

Conclusion

The progress and development of any industry depends on how the players within the industry interact with each other by sharing knowledge. Cross-licensing agreements serve the purpose of creation of developed superior products by ensuring that the respective patent rights of the parties are protected. However, with the increasing number of these agreements and eventual formation into patent pools it becomes pertinent to ensure that they don’t foster any anti-competitive practises that defeat the whole purpose of IP sharing networks.

Author: SaiSruthi B, Legal 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]https://www.eetimes.com/document.asp?doc_id=1129690

[2]https://www.nytimes.com/2014/01/28/technology/google-and-samsung-sign-broad-cross-licensing-agreement.html?_r=3

[3]http://www.ipwatchdog.com/2018/09/18/open-invention-network-mission-maintain-open-source-linux-systems/id=101307/

[4]https://assets.publishing.service.gov.uk/government/uploads/system/uploads/ attachment_data/file/ 312540/informatic-thickets.pdf

[5]https://ryortho.com/breaking/conformis-and-smith-nephew-settle-patent-disputes/

[6] Section 2(c) of Competition Act, 2002

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

Introduction

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

Background of the Case

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

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

Held and Analysis

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

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

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

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

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

Conclusion

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

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

References:

[1] U.S. Code 35 §101.

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

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

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

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

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

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

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

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

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

[11]Supra No. 3 at 2354 (2014).

[12]Ibid at 2358.

[13]Ibid at 2358.

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

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

I. Patents:

a) E-communication, websites and allied issues

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

b) Processing Of Application , Hearing, Video-Conferencing

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

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

 
d) Other Issues

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

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

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

 II. Trade Mark

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

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

c) Video Conferencing in Trade Marks should be implemented.

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

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

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

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

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

 III. DESIGNS

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

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

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

IV. COPYRIGHT

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

b) Copyright – Searchable data is not available

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

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

Samsung Acquires Hera Wi-Fi Patents Through (Patent Troll?) Sisvel

Sisvel UK Limited (“Sisvel”) arranged and finalized a Wi-Fi patent license agreement between Samsung Electronics Co. Ltd. (“Samsung”) and Hera Wireless S.A. (“Hera”), on June 7, 2018. Hera is the wholly owned subsidiary of Sisvel International S.A., the holding company of the Sisvel Group. The Sisvel Group has companies in major countries across the world such as the United States, Italy, China and Germany, among others.

Hera’s portfolio has over 100 patents across various jurisdictions such as the United States and Japan. The agreement covers a multi-year global license for the patents pertaining to the sale and distribution of Wi-Fi enabled products by Samsung. With this, Samsung has access to the essential patents owned by Hera, which are significant to the Institute of Electrical and Electronics Engineers 802.11 group of WIFI standards.

What are Patent Trolls?

Patent Trolls, or Patent Assertion Entities (“PAEs”) essentially acquire patents without the intent of actually manufacturing or developing products using those patents. In general, patent trolls are notorious for enforcing patent rights against infringers through rough legal practices such as undertaking frivolous litigation (or just the threat of it). They generally target smaller companies that cannot afford the expenses of an arduous litigation and hence would be quicker to settle. Even big companies can suffer harm in courts as was seen in the fight between Apple and VirnetX, a Patent Assertion Entity, over the Facetime and iMessage patents. In April 2018, a federal court in the United States ordered Apple to pay $502.6 million in damages to VirnetX.

Is Sisvel a Patent Troll?

The company is known for acquiring essential patents relating to telecommunication and wireless communication industries. One such example is its acquisition of 450 patents from Nokia, out of which 350 were essential for mobile telecommunication, specifically to 2nd, 3rd and 4th-generation communications standards, including GSM, UMTS / WCDMA and LTE. Sisvel has gained a notorious reputation in the past due to aggressive protection of its patents rights. In 2010, Sisvel called for the German police to raid a booth at the CeBIT and a heavy fine was imposed.

Nonetheless, Sisvel may not be considered a troll in its pejorative sense since it provides licenses for all the patents it owns on reasonable terms, that is, FRAND terms. FRAND is an acronym for fair, reasonable and non-discriminatory terms that an owner of Intellectual Property Rights should provide while granting a license. Sisvel acquires patents and then acts as the ultimate destination for companies to get licenses for all essential patents that they could require for their products. Forbes recognized this and declared Sisvel to be “the Patent troll we actually like”. In conclusion, Sisvel  just might be a company reclaiming the term ‘Patent Troll’ to get rid of its negative meaning and continue revolutionizing the patent licensing landscape.

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

Copyrighting Patents

The nature of Intellectual Property Rights is such that, like any other law, it has loopholes as well as overlaps. These overlaps arise due to the fact that IPR protects ideas by their expressions and expression can be in more ways than what can be imagined by one person. There are subject matters which are eligible for the protection of more than one kind of IP. The prime example is the overlap between design and copyrights which has been statutorily dealt with under the Copyrights Act.

However, the recent debate has been with regard to Copyrights and Patents. Now, both of these are as far apart as two IP protection sects can be. Copyright protects literary, dramatic, artistic, cinematographic, musical works whereas Patent grants rights to functional inventions which are novel, useful and non-obvious. However, these rights find a commonality in the patent applications. It is pertinent to disclose the information relating to the working of the invention in the patent application by way of specifications. These specifications also include certain drawings and sketches of working models of the invention. There has been a long standing question whether these applications, which consist of the originally authored specifications and drawings, are eligible to be granted a copyright. Or alternately, can the specifications in the patent application be infringing upon copyrights owned by other authors/scholars.

Countries have taken different stands in the matter. Germany, for instance, excludes patent documents from the copyright protection from the time they are published.[1] However it is necessary for a person to cite the source when using it in a scholarly or academic work. Switzerland as well exclusively exempts the patent documents from being copyrighted.[2] On the other hand the position in UK differs depending on when the patent was filed. All the applications filed prior to 1989 were protected by the Crown Copyright. However, after they enforced their 1988 Copyright Act all the applications prior to 1989 remained with the government  unless they had a copyright notice on them, and the copyright for all the applications filed after that date lies with the applicant and no use can be made unless with express license except for the purpose of ‘dissemination of information’.[3] USA holds a different position for copyrighting patent applications. It has been stated that all the information posted on the website of the USPTO is considered to be in the public domain but the government holds international copyright over it. However, the applicants are allowed to specify their copyright on the patent drawings or other materials.[4]

There have been very few cases which discuss the copyright ability of patent applications. The US case that accepted that copyright subsists in a patent application was In Re Yardley.[5] In more recent cases, it has been questioned whether patent applications can be challenged in court as infringing a copyright. In American Institute of Physics and John Wiley & Sons, Inc. v. Schwegman, Lundberg & Woessner P.A. [6], the University alleged that the firm infringed their copyright by attaching a scholarly article in their patent application. The firm on the other hand took the defense of ‘Fair Use’ and stated that the articles were taken from the USPTO website itself. In two other cases, American Institute of Physics and Blackwell Publishing, Ltd. v. Winstead PC[7]  and John Wiley & Sons, Ltd. and American Institute of Physics v. McDonnell Boehnen Hulbert & Berghoff LLP [8]—and again, after intervention by the PTO—the plaintiffs similarly amended their complaints to disclaim any allegation of infringement based on submission of copies of copyrighted articles to the PTO, or on retention of file copies of the works submitted to the PTO.[9] The defendants in all these cases stated that disclosure of prior art was necessary in order to secure a patent for their invention and thereby should be included under the exclusion of ‘Fair Use’. The court accepted this and said that as long as it proves to be of evidentiary value and is a requisite for disclosure for the government the use can be deemed to be fair.

Contrarily, the UK courts do not follow the same rationale. In Catnic Components Ltd. & Anr. v. Hill and Smith Ltd. the court held that the copyright in a patent ceases to exist once it is published. The court was of the opinion that the main underlying principle behind granting a patent is full disclosure. The idea is to bring the invention into public domain so as to boost innovation. Copyright on the other hand restricts the rights of other people by giving exclusive rights to the owner of the copyright. It is a conflict between the most basic objectives of the two rights. Furthermore, scholars have pointed out that granting copyright could in effect hamper the innovations further. The term of a patent is a maximum of twenty years but in case of copyrights the term is much longer and continues to be in effect 60 or 70 years after the death of the owner, depending on the domestic laws of the country. This creates a problem as to the fact that even after the invention is out in the public domain there would still be rights which will be otherwise attached and thereby will beat the purpose of being in public domain. These questions have not yet arisen in front of the Indian courts and the law is also silent on it, nothing has been stated explicitly. But the position of other countries gives us a fair idea as to how allowing copyright in patent applications or not can lead to different scenarios and raise different questions.

Author:  Yashvi Padhya, Intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at swapnil@khuranaandkhurana.com.

References:

[1] https://www.dpma.de/english/patents/faq/index.html#a22

[2] https://www.admin.ch/opc/en/classified-compilation/19920251/index.html#a5

[3]http://webarchive.nationalarchives.gov.uk/20140603113132/http://www.ipo.gov.uk/types

/copy/c-other/c-other-faq/c-other-faq-type/c-other-faq-type-patspec.htm

[4] https://www.uspto.gov/terms-use-uspto-websites

[5] 493 F.2d 1389 (CCPA 1974)

[6] D. Minn. Civ. No. 12-528

[7] N.D. Tex. No. 3:12-CV-1230

[8] N.D. Ill. No. 12 C 1446

[9]http://www.mondaq.com/unitedstates/x/283736/Copyright/Can+a+Patent+Application+

Violate+the+Copyright+Laws

Patent Commercialisation Via Licensing

Intellectual Property refers to creations of the mind such as inventions, expressions in the form of literary and artistic works, symbols, names and images, etc used in commerce. It can further be divided into Industrial Property or Copyright[1]. Patent as a part of Industrial Property is an exclusive right granted for an invention – a product or process that provides a new way of doing something, or that offers a new technical solution to a problem[2].

According to 7 USCS § 178a, the term “commercialization” means “the stage in the development or advancement of a technology at which point private enterprise is willing to invest in a full-scale production facility[3]. Even though the definition does not emerge from core intellectual property laws, it still sustains the bare minimum standards of the term.

An inventor places his invention[4], his creation in the highest of regards. The process of creation is highly intensive, both in terms of mental input along with investment of time and capital. As every investment, possession and every “real property” needs to be protected, the same concept goes with Patents as they are valuable to the inventor. After it is secured, the next stage of generation of returns can be considered. As every investment is made with a clear pre–intention for recovery of capital invested or profits, it is reasonable to find measures for optimum exploitation of Intellectual Property or in particular, Patents. The Indian Bayh – Doyle Act: Protection and Utilization of Public Funded Intellectual Property Bill, 2008[5] stands as an example of commitment by the country to provide protection and utilisation of Intellectual Property originating from public funded research[6].

Hence, commercialisation is important as it enables the inventor to seek its fair share from the society in exchange for disclosing his creation to the public at large. Commercialisation of a Patent that has been granted can be achieved in two major ways. It can either be assigned or licensed. Assignment of a Patent involves a complete transfer of ownership of Patent by virtue of a contract which is similar to sale of a “real property”. Analogy with lease of a real property can be drawn with licensing of Intellectual Property. By means of a license, ownership rights can be withheld while transfer of other rights can be precisely controlled. A greater degree of control that is conferred upon the licensor of the inventor by virtue of a licensing agreement, and hence it makes more sense as to why a licensor or an inventor must go for it in order to commercialise the patent.

In order to develop a license, it is necessary to determine the strategy followed. Patent licensing constituted following four major strategies:

  1. Carrot Licensing: When a patentee or the current holder(s) of Patent, proactively promotes and voluntarily makes an effort to license the Patent to potential parties who are under no compulsion to do so, such license is known as a carrot license[7].
  2. Stick Licensing: On the other hand, when a license is taken involuntarily, under a threat of suit for Patent infringement, by the infringer from the offended property owner, such license is classified as a stick license[8].
  3. Iron Fist in a Velvet Glove: Whereas, when a potential licensee undertakes a license under an impression that the owner might take a legal action, and such lawsuit will prove to be more expensive than taking out license, such licensing process is like “Iron fist in a Velvet Glove[9].
  4. Joint Venture: When two or more parties enter into an agreement by means of which each party would be entitled to its own rights and obligations towards the venture agreed upon, this is termed as a joint – venture strategy.

For instance, if A, the inventor enters into a joint venture with B, a business that has potential to exploit the patent, it is evident that A will contribute by means of license to exploit the patent[10] whereas B will contribute by generating revenue from the patent and sharing a part of it with A. Hence, both the parties will be better–off if such joint venture takes place.

Licenses can also be classified to be as exclusive or non–exclusive depending upon the nature of the agreement between the parties:

  1. Exclusive license: An exclusive license is the one in which a licensee prohibits the licensor from licensing the patent to any other party.
  2. Non – exclusive license: In such cases, the licensor undertakes a lot of risk by limiting its income – source from a sole licensee and hence prefers to enter into non – exclusive licenses, where there can be multiple licensees. A non – exclusive license can further be sub – licensed[11] by the licensee, thereby making the offer more lucrative.

A license agreement basically undergoes two major steps for its completion:

  1. Documentation: Under Section 68 of The Patents Act, 1970, a license in a patent shall be valid when it is in writing and the agreement between the parties concerned is reduced to the form of a document embodying all the terms and conditions governing their rights and obligations and such agreement is duly executed[12].
  2. Registration: After the agreement takes place, the party that had acquired the license has to register the title or interest in the concerned patent within six months from the date of agreement. This registration process has to take place by the licensee by submitting application Form – 16[13], under section 69(1), 69(2)[14] read with rule 90(1) and 90(2)[15] in writing and has to be signed by both the parties[16].

There are, however, some restrictions that cannot be imposed upon the licensee by means of a license agreement or contract under section 140[17].

After various aspects of intellectual property, including patents, have been understood, the next stage is that of negotiation. The art of negotiation involves three major phases:

  1. Preparation phase: The first and the most important phase of license negotiation is the preparation phase. A lot of questions are required to be answered during this phase, such as: business aspect of license, best outcome for all parties, corresponding leverage for each party, stand on key issues, range and intention of compromise[18].
  2. Discussion phase: All the questions are then framed into issues the endures multiple rounds of discussion, until the parties are on the same page and begin to understand the contract in the same sense.
  3. Proposing and bargaining phase: Following the discussion phase, in the proposing phase, a final agreement is proposed by the licensor to the licensee, who in the bargaining phase puts forward a counter – offer.

Licensing is one of the most lucrative options for commercialisation of Intellectual Property, particularly with regard to patents. However, the art of licensing is tricky and consideration must be given to develop various aspects of license along with licensing strategies to be followed before drafting a final agreement.

Author: Madhur Tulsiani , 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.wipo.int/edocs/pubdocs/en/intproperty/450/wipo_pub_450.pdf

[2] (ibid).

[3]https://www.gpo.gov/fdsys/pkg/USCODE-2011-title7/pdf/USCODE-2011-title7-chap8A-subchapII-sec178a.pdf

[4] “Invention” under Section 2(j), The Patents Act, 1970, is stated as “a new product or process involving an inventive step and capable of industrial application”.

[5]http://www.prsindia.org/uploads/media/1229425658/LB_Protection%20and%20

Utilisation%20of%20Public%20Funded%20Intellectual%20Property%20Bill.pdf

[6] http://iica.in/images/Technology%20Transfer%20and%20IP%20

Commercialization.pdf

[7] http://s1.downloadmienphi.net/file/downloadfile4/206/1391165.pdf

[8](ibid)

[9](ibid)

[10] (ibid)

[11] The right to sub – license is a privilege accorded upon the licensee. The licensee acts as a sub – licensor. As a result, the licensee becomes responsible for effective and full compliance of the license by the sub – licensee and in case of default on the part of sub – licensee, the licensee shall stand responsible. Also, all sub – licenses granted stand terminated if the main license is brought to an end unless other conditions exist.

[12]http://www.ipindia.gov.in/writereaddata/Portal/IPOAct/1_113_1_The_Patents_

Act_1970_-_Updated_till_23_June_2017.pdf

[13] http://www.ipindia.gov.in/writereaddata/Portal/IPOFormUpload/1_28_1/form-16.pdf

[14] (ibid)

[15]http://www.ipindia.gov.in/writereaddata/Portal/IPORule/1_70_1_The-Patents-Rules-2003-Updated-till-23-June-2017.pdf

[16] http://www.invntree.com/blogs/indian-perspective-licensing-or-sale-patents

[17] (ibid)

[18] http://www.wipo.int/edocs/mdocs/aspac/en/wipo_ip_han_11/wipo_ip_han_11_

ref_t7b.pdf

Amendments in Patent Application Process in Singapore

The process of applying for patents in Singapore will become much easier and more efficient after Intellectual Property Office of Singapore (IPOS), in its continued efforts to ease patent application process, has introduced few changes in Patent forms 1 and 12B. According to a circular released on November 21, 2017 on IPOS website [1], these changes will be effective from 10 December 2017 [1] and will be available to Patent Applicants from that date. IPOS claims that after these changes the patent application process will be enhanced for general Applicants.

Amendments to ‘Patents form 1’ [2]

a. Patents forms 1 & 8 will be merged

This change will allow Applicants to enter details of inventors for which the patent has been applied in part 7 of the newly merged form i.e. merged ‘form 1’ & 8. There will be no need to file a separate form 8. It is a welcome move for the Applicants as they will not have to fill multiple forms. In addition to this, the Applicants will now be able to derive rights from the Inventor. Applicants can do this by filling in part 8 of the newly merged form. However, these amendments will not change the process of correcting the details of the inventors i.e. Patents Form 13 will not be applicable for such amendment or correction. Applicants will also be able to submit the details of the inventor separately by filling Patent Form 8 which will still be available for submissions.

b. A separate attachment for sequence listing

A new document will also be available for “sequence listing” for attachment at the time of filing of patent applications. A “sequence listing” is a list of biological sequences in the format prescribed by WIPO Standard ST.25 (Presentation of nucleotide and amino acid sequence listings) using controlled vocabulary (i.e. defined terms for certain features). This document will be available to patent applicants in case they do not want to include sequence listing as a part of description or claims. Also, the applicants will be able to paginate this document and will be able to indicate the page count of sequence listing document in a separate field.

In addition to this, if Applicants want to submit sequence listing as a separate reference document, not forming part of the description or claims, such document can be submitted using the mentioned “sequence listing” document type with a cover letter attached to indicate that it will serve as a reference document only.

c. A new feature of auto-population during divisional filings

Yet another efficient and productive move by the IPOS is the introduction of auto-population feature when a divisional application is being filed. This means that when an Applicant files a divisional application, relevant information from the parent application will be auto-populated for the convenience of the Applicants. Having said that, the Applicants will still be able to amend the auto-populated fields if they choose to do the same.

 Amendments to Patents ‘Form 12B’ [3]

Similar to the changes in Patents form 1, for the ease of Applicants, Patents Form 13 will also be merged with Patents Form 12B. Applicants don’t need to fill Form 13 in case they wish to make amendments to the specification when requesting for an examination review report using Patents Form 12B, and can do so by selecting the option “Written submissions and proposed amendments are filed” in Patents form B. With this selection, the Applicant will be required to submit both a clean and a marked up copy of the amendment of the specification.

Conclusion

Such amendments in the Patent Application process as mentioned above will be available from December 10, 2017. Further, these changes will ease the application process and will allow Applicants some flexibility in sequence listing, and amending details of inventors as well as amending the specification.

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

 References:

[1] https://www.ipos.gov.sg/docs/default-source/resources-library/patents/circulars/(2017)-circular-no-8—enhancements-to-patent-application-process.pdf

[2] https://www.ipos.gov.sg/docs/default-source/resources-library/patents/patent-forms-and-fees/form-pf1—otc.pdf

[3] https://www.ipos.gov.sg/docs/default-source/resources-library/patents/patent-forms-and-fees/form-pf12b—otc477c1877c2d0635fa1cdff0000abd271.pdf