Tag Archives: patents

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.

NEPAL’S IP LAW: AN ENCAPSULATION

Intellectual property law in Nepal is comparatively new and it enjoys the extension provided for under the TRIPS agreement to the least developed country. The Patents, Designs and Trademarks are protected under one head, and the governing act/ legislation is known as “The Patent, Design and Trade Mark Act, 2022 (1965)” (hereinafter referred to as “Act”).

Trademarks

Section 2: Definitions: Unless the subject or the context otherwise requires in this Act:

“Trade-mark” means word, symbol, or picture or a combination thereof to be used by any firm, company or individual in its products or services to distinguish them with the product or services of others.

FILING PROCEDURE:

Step 1: Filing

  • Who may apply: Section 17:
  • Any person desirous to register the trademark of his business shall submit an application to the Department in the format specified in Schedule 1(C).
  • Document: Four specimens of the Trade Mark sought to be registered.
  • Fees: NPR 2000.

Trademark Application in Nepal can be filed in a single class only. Mutli-class Application cannot be filed.

Step 2: Investigation:

  • Section 18: When an application is received by the department, it conducts necessary investigation/examination and provides an opportunity of being heard to the applicant in case of any concerns/objections.
  • Examination is done with regard to distinctiveness, possibility of distinctiveness and conflicting trademarks.

Step 3: Grant/ Refusal:

  • If the department is satisfied with the application for registration, it shall register the trademark in the name of the applicant and grant him a certificate. Registration fees: NPR 5000.
  • It may conduct further inquiry/ investigation.
  • The mark shall not be registered/ registration is liable to be cancelled when the subject mark:
  • Hurt the prestige of individual/ institution
  • Adversely affect public conduct or morality
  • Undermine the national interest
  • Undermine the reputation of another’s trademark
  • Found to have already been registered in the name of another person.
  • If the registered trademark is not used within 1 year from the date of registration, the department may cancel the registration after conducting necessary inquiries.
  • The term of the registered trademark shall be 7 years from the date of registration.

Step 4: Publication:

  • Section 21A: The department shall publish the trademarks registered under section 18. Such publication is made in the Trademark Journal.
  • Anyone who has any objection to the same shall file a complaint to the department within 3 months from the date of such publication in Trademark Journal.
  • Necessary actions shall be taken by the department after conducting inquiries.

Step 5: Renewal and Cancellation

  • Renewal: Section 23B:
  • A trademark holder needs to renew the registration within a period of 35 days from the date of expiration of the term for which he is entitled to use the same.
  • The prescribed form is Schedule 2(F) and the fee is NPR 500 each time.
  • When the time limit of renewal expires, renewal may be done within 6 months from the date of expiry of the time limit for the same along with a fee of NPR 1000.
  • A trademark can be renewed indefinitely for a period of 7 years each time after a payment of renewal fee.

 

Patents

Section 2: “Patent” means any useful invention relating to a new method of process or manufacture, operation or transmission of any material or a combination of materials, or that made on the basis of a new theory or formula.

FILING PROCEDURE:

Step 1: Filing:

  • Who may apply: Section 3 and 4:
  • Any person desirous of having any patent registered in his name shall submit an application to the Department in the format prescribed in Schedule 1(A) containing the following particulars, along with all evidences related to the same in his possession:
  • Name, address and occupation of the inventor (person inventing the patentable subject matter)
  • If the applicant is not the inventor, then information as to how and in what manner has he acquired title thereto from the inventor
  • Process of manufacturing, operating or using the patent
  • If the patent is based on any theory or formula, then the same needs to be mentioned.
  • Maps or drawings, if any.
  • Application fees: NPR 2000

Step 2: Investigation:

  • Section 5: On receipt of an application for registration, the Department shall conduct all investigation or study to ascertain two things:

(a)  Whether the patent claimed in the application is a new invention or not

(b)  Whether it is useful to the general public or not.

 

  • Section 6: The Department shall not register any patent under this Act in the following circumstances:

(a) In case the patent is already registered in the name of any other person, or

(b) In case the applicant him/herself is not the inventor of the patent sought to be so registered nor has acquired rights over it from the original inventor, or

(c) In case the patent sought to be registered is likely to adversely effect the public health, conduct or morality or the national interest, or

(d) In case it is contradictory to the prevailing laws (the registration of the patent) will constitute a contravention of existing Nepal law.

The Examination/Investigation is of two kinds namely;

  1. Formality Examination- It is done to determine whether the application for patent fulfills the requirements of the same.
  2. Substantive Examination- It is done to determine the patentability of the invention, whether;

–  The claimed product/process is patentable or not.

–  The claimed invention is new i.e passes the test of Novelty.

–  The claimed invention is capable of Industrial Application.

– The invention involves a ‘innovative step’

Step 3: Grant/ Refusal:

  • If the Department is satisfied with the findings under Section 5, it shall register the patent in the name of the applicant.
  • In case, the Application does not fulfill the statutory requirements, a notice to the applicant is sent regarding the Rejection of Application.
  • Section 7: Issue of registration certificate:
  • When the registration of the patent is granted, the Department shall issue a certificate of registration in the name of the applicant in the format prescribed in Schedule 2(A).
  • The fee for the same is NPR 10,000.
  • Section 8: The term of the patent granted shall be 7 years from the date of registration.

Grounds of refusal/ cancellation of registration: Section 6:

  • The patent is already registered in the name of other person
  • The applicant is not the inventor of the subject matter of the patent and has not acquired rights over it from the original inventor
  • The patent sought adversely affects public health, conduct or morality, or national interest
  • The patent sought is contradictory to existing Nepalese laws.
  • The applicant will be provided a reasonable opportunity of being heard before the department cancels the registration of the patent.

Step 4: Publication:

  • Section 7A: All patents registered under the Act, except those that are kept secret in the national interest, shall be published in the Nepalese Gazette by the department.
  • In case of objections, the complaint may be filed within 35 days from the date of seeing or copying the Patent, and thereafter, the Department shall conduct necessary inquiries and take further action. The fee for complaints and objections is NPR 1000.
  • In case anyone wants to see or copy the particulars, maps or drawings of a patent, he can do so by paying the prescribed fee of NPR 750.

Step 5: Renewal

  • Section 23B: Renewal:
  • A patent holder shall renew the registration within a period of 35 days from the date of expiration of the term for which he is entitled to use the same.
  • The prescribed form is Schedule 2(D) and the fee for
  1. First time: NPR 5000
  2. Second time: NPR 7500.
  • When the time limit of renewal expires, it may be done within 6 months from the date of expiry of the time limit for the same along with a fee of NPR 1000.
  • A patent can only be renewed twice for a period of 7 years at a time.

 

FILING CONVENTION PATENT APPLICATIONS IN NEPAL:

Nepal being party to Paris Convention since June 2001, an applicant desirous of filing patent application in Nepal claiming priority from one or more convention countries based on same invention may file such application within 12 months from the date of earliest priority. Pertinently, Nepal is not a member of PCT (Patent Cooperation Treaty).

 

Designs

Section 2:

“Design” means the form or shape of any material manufactured in any manner.

FILING PROCEDURE:

Step 1: Filing:

  • Who may apply: Section 12 and 13:
  • A person desirous to register the design of any article manufactured or caused to be manufactured, shall submit an application in the format specified in Schedule 1 (B) to the Department.
  • The applicant shall also furnish four copies of such design and maps, and drawings and particulars thereof.
  • Fees: NPR 1000.

Step 2: Examination

This involves “Formality check” and “Substanstive check” –

  1. Formality Check- An application is submitted to check if the statutory formalities and procedural requirements are fulfilled.
  2. Substantive Check- After the formality check, a substantive examination is carried out, weather ;

–  There is existence of a prior application or registration of the same.

–  Such design will hurt the prestige or interest of an individual or institution or conduct of public or morality of undermines national interest.

If either of the above mentioned points are

Step 3: Grant/ Refusal:

  • Section 14: On receipt of the application filed by any person under Section 13, the Department shall register the design in the applicant’s name and issue a certificate of registration in the format specified in Schedule 2(A). i.e If it has passed the stage of Examination.
  • In case, the Application is rejected, a Notice of Rejection is sent to the Applicant.
  • Registration fees: NPR 7000.
  • The term of a registered design is five years from the date of registration.
  • Renewal: Section 23B:
  • A design holder shall renew the registration within a period of 35 days from the date of expiration of the term for which he is entitled to use the same.
  • The prescribed form is Schedule 2(E) and the fee for
  1. First time: NPR 1000
  2. Second time: NPR 2000.
  • When the time limit of renewal expires, it may be done within 6 months from the date of expiry of the time limit for the same along with a fee of NPR 1000.
  • A design can only be renewed twice for a period of 5 years at a time.

Step 4: Publication:

  • Section 21A: The department shall publish the designs registered under section 14, along with their particulars of renewal or cancellation.
  • Anyone who has any objection to the same need to file a complaint to the department within 35 days from the date of such publication.
  • Post receiving the complaint, Department takes necessary actions after conducting inquiries.

Step 5: Renewal/ Cancellation

Grounds of refusal/ cancellation: Design is liable to be refused or cancelled, if the design or design registration, as the case may be:

  • Hurt the prestige of individual/ institution
  • Adversely affect public conduct or morality
  • Undermine the national interest
  • Found to have already been registered in the name of another person.
  • The design holder will also get an opportunity to show cause as to why his registration must not be cancelled.

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.

Merk’s patent valid but Teva’s Nasonex generic non-infringing

In Merck Sharp & Dohme Corp.  (hereinafter referred to be as “Merck”) v. Teva Pharms. United States, Inc. (hereinafter referred to be as “Teva”) decided on November 16, 2016, Teva’s application of Abbreviated New Drug Application (hereinafter referred to as “ANDA”) no. 205149 had triggered Merck to file infringement suit against Teva in respect of US patent number 6127353 (hereinafter referred to be as “353” patent) which is currently listed against NDA number of New Drug Application (hereinafter referred to as “NDA”) number 020762. The‘353 patent is set out to expire in April 03, 2018 with Pediatric Exclusivity. NDA 020762 was approved for ‘NASONEX’ having MOMETASONE FUROATE (hereinafter referred to as “MMF”) as active ingredient in the dosage form EQ 0.05MG BASE/SPRAY. Merck further stated in its complaint that Teva’s ANDA application contained certification (PARA IV) that US patent no. 6127353 is invalid and unenforceable and will not be infringed by Teva producing its generic, the complaint also stated that Teva refused to allow Merck access to its ANDA application or samples.

Anhydrous Mometasone Furoate (“MFA”) was earlier patented by Merck in the early 1980s. MFA and MFM are the polymorphs. On July 3, 2014, plaintiff i.e. Merck brought this action alleging infringement. Merck filed an amended complaint on August 17, 2015, which Teva answered on August 31, 2015. Independent claims 1 and 6 and dependent claims 9-12 of the ‘353 patent titled ‘Mometasone furoate monohydrate, process for making same and pharmaceutical compositions’ were asserted by Merck.

Independent claim 1 and claim 6 have been reproduced below for the reference:

Claim 1:

9.alpha.,21-dichloro-16α-methyl-1,4-pregnadiene-11β,17α-diol-3,20-dione-17-(2′-furoate) monohydrate.

Claim 6:

A pharmaceutical composition comprising mometasone furoate monohydrate in a carrier consisting essentially of water.

Teva’s ANDA contains MFA as the active ingredient and has shelf life of 2 years. Merck did not allege the inclusion of MFM in the pre-formulation active ingredient of Teva’s formulation.

Teva had challenged the ‘353 patent on the grounds of double patenting with U.S. Patent 6,180,781 (hereinafter referred to be as ‘781’) and lack of subject matter description. Court rejected both the arguments and found the Patent to be valid. To ascertain whether Teva’s ANDA product contains any MFM during shelf life, Teva presented six different batches of its product to Merck. Merck’s expert, Dr. Victor Young (“Dr. Young”), testified in favor of Merck by placing a high premium on his ability to visually distinguish between MFM and MFA using a microscope. Teva’s expert, Dr. Leonard Chyall (Dr. Chyall), however, contended that protocol required visual observation to be paired with a more accurate method of measurement. Court observed that “Dr. Chyall has offered up a reasonable criticism of such findings. At bar, Dr. Chyall’s testimony is more credible and consistent”. Finally the court ordered in favor of Merck for the issues of validity but declared Teva’s product to be non-infringing the ‘353 patent. In the form 10K submitted with Securities and Exchange Commission on February 26, 2016, Merck apprehended decline the sale of Nasonex after the entry of generics. Here is their take ‘For example, a court has ruled that a proposed generic form of Nasonex does not infringe the Company’s U.S. patent for Nasonex. If the generic form of Nasonex receives marketing approval in the United States, the Company will experience a loss of Nasonex sales.’

About the Author :  Ms. Rashmi, intern at Khurana and Khurana, Advocates and IP Attorneys. For any queries, please write to swapnil@khuranaandkhurana.com.

Business Method Patents

During the recent visit of Indian Prime Minister to USA, one of the issues that figured prominently in talk agenda was IP related issues. American business community especially those from pharmaceutical industry had been lobbying with their government to pressurize India to bring Indian Patent Act and its provisions in aligned with global systems so that their investments can be legally protected.As of late India has been looking for increased investment both in infrastructure projects and technology they chose the Indian Prime Minister’s visit as a way to get their concerns addressed.

With above backdrop, it is natural to look for areas in IP domain where Indian Patent Act and its provisions deviate from those of other countries. One issue on which Indian Patent Act differs from many others especially USA is non-patentability of Business Method Patents in Indian Patent Act.

Summarized below is the information related to Business Method Patents and policy and practices adopted by different countries in this respect.

Overview:
Business Method Patents is one of the most amazing topics in the patent industry though in India according to the Indian patent Act and Rules these are not patentable. A business method may be defined as “a method of operating any aspect of an economic enterprise”.First of all let us have a look at some basic points related to Business Method Patents and how these Patents help in improving/growing business for both independent inventors and major corporations.

Business Method Patents are a class of Patents which disclose and claim new methods of doing business and include new types of e-commerce, insurance, tax compliance etc. Business method patents are a relatively new species of patent and there have been several reviews investigating the appropriateness of patenting business methods. Every company has its own strategy and goals and accordingly evolves an approach to achieve them. The approach may involve method of marketing their product, method of giving importance and weight age to their client, method of carrying out business transactions including financial transactions and other such related aspects. Companies invest huge amounts of their resources to innovate and develop new and unique systems. These companies would like to ensure that their innovative methods and approach is be protected. Business Method Patents can be one way of protecting such systems.Hence Business Method Patents help inventors or companies to prevent or stop their competitors or other firms from making use of their unique ideas and work.

A cutting-edge issue in regard to business-method patents is whether they are patent-ineligible because they are not “technological,” regardless of whether they meet the other criteria of patent-eligibility and patentability.

History :

For many years, the USPTO took the position that “methods of doing business” were not patentable. However, with emergence in the 1980 and 1990s of patent applications on internet or computer enabled methods of doing commerce, USPTO found that it was no longer practical to determine if a particular computer implemented invention was a technological invention or a business invention. Consequently they took the position that examiners would not have to determine if a claimed invention was a method of doing business or not. They would determine patentability based on the same statutory requirements as any other invention. The allowance of patents on computer implemented methods for doing business was challenged in the 1998. The court affirmed the position of the USPTO and rejected the theory that a “method of doing business” was excluded subject matter.The USPTO continued to require, however, that business method inventions must apply, involve, use or advance the “technological arts” in order to be patentable. This was based on an unpublished decision of the U.S. Board of Patent Appeals and Interferences. However, this requirement could be met by merely requiring that the invention be carried out on a computer.

In October 2005 the USPTO’s own administrative judges overturned this position in a majority decision of the board in Ex Parte Lundgren, Appeal No. 2003-2088 (BPAI 2005). The board ruled that the “technological arts” requirement could not be sustained as no such requirement existed in law.

In light of Ex Parte Lundgren, the USPTO issued interim guidelines for patent examiners to determine if a given claimed invention meets the statutory requirements of being a process, manufacture, composition of matter or machine. These guidelines asserted that a process, including a process for doing business, must produce a concrete, useful and tangible result in order to be patentable. It does not matter if the process is within the traditional technological arts or not. A price for a financial product, for example, is considered to be a concrete, useful and tangible result.

There have been further US supreme court rulings on the subject and as on date, litmus test for patent eligibility of business processes is: first, processes that transform an article from one state or thing to another are patent-eligible regardless of whether their use requires a machine. Processes involving transformation of abstract financial data,are probably patent-ineligible. Second, processes that do not make patent-eligible transformations are patent-eligible only if they are claimed to be carried out with a “particular machine.

First Business Method Patent was filed in Japan by a software company. United State was the second country to get Business Method Patent in patentable criteria. Since then number of Business Method Patentshave been filledandgranted. This indicates the confidence and success which the business companies have in Business Method Patents. [Source: Wikipedia]

CLASSIFICATION

Business Method Patents have also been part of international discussions and the same have been included in WIPO agreement.  According to international classification done by WIPO Business Method Patents are divided into a number of classes which basically fall in G06Q class and are defined as :

“DATA PROCESSING SYSTEMS OR METHODS, SPECIALLY ADAPTED FOR ADMINISTRATIVE, COMMERCIAL, FINANCIAL, MANAGERIAL, SUPERVISORY OR FORECASTING PURPOSES; SYSTEMS OR METHODS SPECIALLY ADAPTED FOR ADMINISTRATIVE, COMMERCIAL, FINANCIAL, MANAGERIAL, SUPERVISORY OR FORECASTING PURPOSES, NOT OTHERWISE PROVIDED FOR”

Business Method Patents in different countries:

  • Business Method Patents in USA:

USA is one of those countries in which large amount of business Method Patents have been filed during last 20 years and many big companies invest large amounts of money and other resources for planning new ideas for doing business which lead to the development in Business.

  • Business Method Patents in Europe:

According to European Patent Convention Article 52 which deals about patentable invention, 52(2c) talks that any “schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;” are not Patentable.

  • Business Method Patents in Japan:

In Japan Business Method are well known and comes under the patentable subject matter. However, patents are not issued solely for business methods and the business method must invariably contain a technical aspect that is both tangible and real for patents to be awarded.

  • Business Method Patents in India:

According to Indian patent act section 3, which deals with inventions which are considered not patentable, any “mathematical method or business method or a computer program or algorithms are not patentable”. However, they are patentable if a new method solves a “technical” problem and an apparatus/system is developed from it.

Opinion:

Allowing business methods to be patented or incorporating Business Method Patents into Indian Patent Act could allow investors to have more confidence in our system and thus encourage them to increase their investment in our infrastructure and other projects.

The importance and value of patenting a business method can be illustrated by the case of Netflix, a leading internet subscription services company that was awarded a patent for its computer-implemented approach for renting movies and TV shows to customers in 2003. In 2006, Netflix filed a patent infringement suit against their primary competitor, Blockbuster. The case was later settled out of court.

In my opinion Indian patent authority should add Business Method Patents into its patentable category as it will lead to improved business ethics and at the same time will motivate more and more companies from abroad to invest in India. Also it helps companies who invest large amount of resources for growth of the company by way of unique business ideas, to secure themselves and stop competitors from using their ideas/work.

About the Author: Mr Paras Khurana, Patent Associate at Khurana & Khurana and can be reached at: paras@khuranaandkhurana.com

Bose Vs Beats- The Headphone War

There has been great buzz in patent world with the reported news on 25 Jul 2014 of suits filed by Bose Corps against Beats Electronics in US International Trade Commission (ITC) to block US imports of noise cancelling headphones made by Beats Electronics and a mirror suit in Federal District Court in Delaware, USA over the alleged patent infringement of its noise-cancelling technology used in Beats headphones. The patent infringement suit is being viewed by different entities in different perspectives. Is it just a fight by Bose Corporation to protect its IP rights? Or is it a proverbial  David versus Goliath fight– wherein a fifty year old giant Bose Corporation is using its financial might to subdue an eight year old start up company? The timing of this is also raising many eyebrows as this patent infringement suit is being linked to the news about acquisition of Beats Electronics by Apple in May 2014.

Bose and Beats are two of the leading players in the headphone industry and this suit can simply be about Bose Corporation’s desire and right to protect its intellectual property rights. The suit essentially is about noise reduction technology used for noise reduction methods in headphones. Bose contends that Beats Adaptive Noise Cancellation (ANC) technology being used in their headphones Beats Studio ® and Studio ® Wireless Headphones infringes on the Automatic Noise Reduction (ANR) technology which is protected by their following five patents:

  1. US 6717537
  2. US 8073150
  3. US 8073151
  4. US 8054992
  5. US 8345088

Bose in these suits have also informed about their huge investment over an extended period of time in research and development. Bose has further contended that for the last 50 years they have been investing extensively in research, development, engineering, and design of proprietary technologies and their implementations can be seen in their line of products such as noise cancelling headphones. Bose has further sought to be compensated for losses suffered and profit lost because of Beats using their patented technology.

High end Headphone market in 2013 has been valued at $ 1 billion with Beats reported having 60 % of this market share. Bose law suit therefore could be genuine desire to protect its market share especially in US and European markets.

In another perspective, this could be viewed as a fight between Bose and Apple where Bose by targeting Beats Electronics is actually targeting Apple. But this can be actually counter productive since Beats Electronic now with Apple’s financial backing can engage in a long drawn legal battle and take this fight to a legal and logical conclusion. Apple as reported in various news items has just acquired Beats Electronics for $ 3 billion and Apple can be expected to fight hard to protect its interests.

Bose Corporation’s first suit filed with International Trade Commission against Beats Electronics is to stop Beat Electronics from importing its headphones with noise cancelling technology to the United States from China. This action has been taken to prevent Beat Electronics from taking over the market and also to reduce the competition from Beat. Bose Corporation’s second suit against Beat Electronics is to stop them from infringing on their patented technologies.

Further, Bose is not leaving any stone unturned and is taking legal actions against Chinese companies also to make them stop from infringing on the patents held by Bose Corporation. One of the Bose representatives has said in a statement “We are committed to protecting our investment and our customers and defending the patent we own”.

As Apple is already involved in a number of big patent battles especially with Samsung and is one of the top companies with most Patent infringement cases in USA, it will be interesting to see how Apple / Beats are going to react to this and how they are going to defend themselves against this law suit. We have to wait for the decision from the court to see if Beat will be able to defend themselves or if they will prefer the case to get the law suits settled outside the court as was done recently between Apple and Samsung.

Ultimately only legal merits will be considered for outcome of this suit but it will be interesting and fruitful to watch how these big companies defend themselves as the precedent set with these suits could help in formulating future business strategies not only for business entities involved in these law suits but also other business houses.

About the Author: Mr Paras Khurana, Patent Associate at Khurana & Khurana and can be reached at: paras@khuranaandkhurana.com

Patent Registration Process in India

With a significantly increasing number of Individual Inventors and Small/Medium Sized Clients regularly asking on Patent Registration Process in India, this article is an effort by our Intern, Ananya Singh, to come up with a quick article on Patent Registration Process in India. We hope that a link to the article can give desired clarity on the procedure.

A patent is an exclusive right granted by a Government for a limited period of time within a particular territory to an inventor or assignee to exclude others from making, using, offering to sell, selling, or importing an invention, in exchange for detailed public disclosure of an invention. An invention is said to be patentable if it satisfies the following three criteria:

  • Novelty: The invention has to be new and cannot be part of the “prior state of art”. This prior art refers to everything that has been published, presented or disclosed to the public (example on a website, newspaper or in any research article), as on the date of filing for the patent.
  • Inventiveness (Non-obviousness): An Inventive step means a feature of an invention that involves technical advancement as compared to the existing knowledge and that makes the invention not obvious to a person skilled in the art.

An invention cannot be considered to have an inventive step if a non-inventive mind would have thought of the invention by combining the teachings of different documents that are available to the public.

  • Utility/Industrial Application: An invention must be capable of being produced or used in some kind of industry. It has to take the form of device or apparatus, a product such as some new material or an industrial process. An invention is certified for patentability, if it:
    • Can be manufactured
    • Can be used in at least one field of activity
    • Can be reproduced with the same features/ properties as many times as necessary

TYPES OF PATENT APPLICATIONS 

  1. Provisional Application

Provisional Application is a temporary application filed with a Patent      Office to claim a “Priority Date” and when an invention is not complete in all aspects. This application is extremely helpful since it is relatively inexpensive to prepare and file, enables the inventor to study the feasibility of the invention in terms of potential markets, distributors, licensees. However the complete application needs to be filed within 12 months or else it will be treated as abandoned.

  1. Complete Application

  A patent application containing the complete specification and claims of the invention is called a complete application and this can be filed directly if the invention is complete in all aspects.

  1. Convention Application

When an applicant files the application for a patent, claiming a priority date based on the same or substantially similar application filed in one or more of the convention countries, it is called a convention application. In order to get convention status, an applicant should file the application in the Indian Patent Office within twelve months from the date of first filing of a similar application in the convention country.  

  1. Patent Cooperation Treaty (PCT) – International Application

  It is an international agreement for filing patent applications having effect in up to 138 countries. PCT does not provide grant of an international patent, the treaty:

  • Simplifies and delays the process and expenses of filing patent applications if one wishes to file in multiple countries.
  • Also the applicant needs to file just a single application with one receiving patent office in order to simultaneously seek a patent in multiple (up to 138 countries) across the globe.

The application is to be filed in English language within 12 months from the date of filing in India.

  1. PCT-National Phase Application

An international application made according to the Patent Cooperation Treaty (PCT) being the first application, can enter the national phase in India within 31 months from the international filing date or priority date (whichever is earlier). This application filed before the Controller in the Indian Patent Office claiming the priority and international filing date is called PCT National Phase application. The filing date of the application shall be the international filing date accorded under the Patent Cooperation Treaty.

FILING

A patent application shall be filed on Form-1 along with Provisional/ Complete Specification, with the prescribed fee as given in First Schedule at an appropriate Patent office in India in accordance with the jurisdiction. An application filed with provisional specification, disclosing the essence of the nature of the invention helps to register the priority by the applicant. The provisional application must be followed by a complete application otherwise the application gets abandoned.   Patent (Amendment) Rules 2014 has introduced a new category of applicant as “small entity”. Small entity, for Indian applicant, is defined as an enterprise engaged in the manufacture or production of goods, an enterprise where the investment in plant and machinery does not exceed the limit specified for a medium enterprise under Micro, Small and Medium Enterprise Development Act, 2006. A new Form 28 has been introduced which needs to be filed by a small entity applicant and must be accompanied by proof of registration under The Micro, Small and Medium Enterprises Development Act, 2006 (27 of 2006). The prescribed fees under different heads are given below:

(a) E-filing

Particulars Individual Small Entity Other than Small Entity
For Filing Patent Application 1600 4000 8000
For each sheet of Specification in addition to 30 pages 160 400 800
For each claim in addition to 10 claim. 320 800 1600

(b) Physical Filing  

Particulars Individual Small Entity Other than Small Entity
For Filing Patent Application   1760 4400 8800
For each sheet of Specification in addition to 30 pages   176 440 880
  For each claim in addition to 10 claim   352 880 1760

Documents can be e-filed through the online portal of the patent office or manually in the patent office having jurisdiction selected from Kolkata (head office), Delhi, Mumbai, or Chennai. More information for filing online application is available on the website of Patent Office i.e. www.ipindia.nic.in

PUBLICATION

A patent application will be published automatically in the official journal after expiry of 18 months from date of filing or date of priority of the application(whichever is earlier) containing title, abstract, application no, and name of applicant and inventor. The Patent office Journal is freely available on patent office site i.e. www.ipindia.nic.in.   There is also a provision for early publication of an Indian patent application by filing a formal request. The prescribed fees for early publication are as follows:      

(a) E-filing

Particulars Individual Small Entity Other than Small Entity
Application for request for Publication 2500 6250 12500

 (b) Physical Filing

Particulars Individual Small Entity Other than Small Entity
Application for request for Publication 2750 6875 13750 

Pre- Grant OPPOSITION

The Pre-Grant opposition can be filed by any person contesting the matter disclosed in the patent application. There is no fees applicable for filing pre-grant opposition.

EXAMINATION

The Process of examination starts with filing a request for examination. The request for examination has to be made within 48 months from the date of priority or filing whichever is earlier. Once the request is filed, the Patent Office will issue the First Examination Report (FER). The Applicant must respond to the objections (if any) raised by the Examiner and place the application in order for grant within 12 months from the date of issue of the FER. The prescribed fees under different heads are given below:  

(a) E-filing

Particulars Individual Small Entity Other than Small Entity
Express request of examination of application for patent 4000 10000 20000
Particulars Individual Small Entity Other than Small Entity
Request of examination of International Application for patent 5600 14000 28000

(b) Physical Filing

Particulars Individual Small Entity Other than Small Entity
Request of examination of application for patent 4400 11000 22000
Particulars Individual Small Entity Other than Small Entity
Request of examination of International Application for patent 6160 15400 30800

Post-Grant Opposition

Post grant opposition may be filed at any time after the grant of patent within one year from the date of publication of the patent. Under this provision any person having any interest in the related field. The post grant opposition has to be filed in the prescribed form 7 along with prescribed fees of Rs. 2400 for natural person, Rs.6000 for small entity and 12,000 for large entity.

(a) E-filing

Particulars Individual Small Entity Other than Small Entity
Notice of Opposition (Post-grant opposition) 2400 6000 12000

(b) Physical Filing

Particulars Individual Small Entity Other than Small Entity
Notice of Opposition (Post-grant opposition) 2640 6600 13200

GRANT

The order of grant is given if all the requirements of the Patent Act are complied. Term of every patent in India is 20 years from the date of first filing of patent application (it can be either from date of filling or priority date, whichever is earlier). However, in case of PCT National phase applications, the term of 20 years begins from International filing date.

RENEWAL

After the grant of patent, every patentee has to maintain the patent by paying renewal fee every year as prescribed in the schedule I. For first two years, there is no renewal fee.  The renewal fee is payable from 3rd year onwards.  In case the renewal fee is not paid the patent will be cease.

Flow chart

The Nagoya Protocol – Convention on Biological Diversity

A new international treaty named the “Nagoya Protocol” will be giving some relief to India and other developing countries. The Nagoya Protocol on Access to Genetic Resources with an objective of ensuring access of genetic resources to the signatory countries and ensuring fair and equitable sharing of benefit to the local community and signatory country that provides genetic resources is a supplementary agreement to the Convention of Biological Diversity. The protocol singed in Nagoya, Japan on 29th Oct 2010 having 50 signatory states (ratification by 50 countries being the threshold requirement) as on today is all set to come in force on 12 Oct 2014.

Let’s look at the different perspective of The Nagoya Protocol and how it would help the providers (country)/ local community, sourcing country and users in the coming days after its implementation.

BACKGROUND

It all started in June 1992, when Convention on Biological Diversity (CBD) was opened for signature. CBDs inspiration came from the world’s community growing commitment to sustainable development.

Genetic resources are the heritable characteristics of a plant or animal of real or potential benefit to people. The core idea of CBD is to allow its members to get easy access to genetic resources (GR) and provide an equitable share of derived profit to the sourcing country/ local community and to the people who have helped to grow and protect the genetic resources.  The Nagoya Protocol was adopted after nearly six years of negotiations to provide a legal framework which will create transparency for both the country (provider) and users of genetic resources by establishing a unified system for allowing access to genetic resources, stopping illegal international trade of GR and by creating a equitable sharing model wherein both the user and provider can acquire equal benefits.

The Protocol has three main objectives i.e. access, benefit- sharing and compliance which lets the users and provider to establish more predictable conditions about usage of genetic resources, and ensure that only legally acquired genetic resources are used.

Now for these above conditions to lay down in an appropriate manner a unified protocol system was required. The protocol should find a practical way in order to share these benefits since until now the lack of a coherent global standard has resulted in a high level of mistrust and obstacles to biodiversity research and its potentially valuable outcomes.

Parameters under which the Protocol gets Applied

The Protocol will be applied only when genetic resources pathogens are ‘accessed’ and ‘used’. Under the Protocol, the term ‘used’ also means to include research and development work on the genetic and/ or biochemical composition of genetic resources. In addition to genetic resources in its original form, the protocol also covers traditional knowledge (TK) associated with genetic resources. On the other hand the protocol does not apply to genetic resources covered by benefit-sharing agreements and specialised access such as the International Treaty on Plant Genetic Resources for Food and Agriculture, or the framework for pandemic preparedness of the World Health Organisation. Also it will not be applied to human genetic material, or to resources that were acquired before the Protocol comes into practise.

Ratification of Nagoya Protocol by India

India and other developing countries with biological diversity and natural resources will be benefited by commercial use of these resources. India lead group of nations for over two decades in UN negotiation to get the other developed countries signed the Nagoya Protocol in 2011 and the Union Cabinet ratified it in 2012. India is one of the mega diverse countries rich in biodiversity and traditional knowledge is expected to get maximum benefits as this protocol gets implemented this October.

It has also been seen that our country has been a regular victim of misappropriation of our genetic resources and associated traditional knowledge, which have been patented in other countries (well known examples include haldi and neem). It is expected that the Access Sharing and Benefit (ABS) Protocol which is a key missing pillar of the CBD, would rectify this problem.

Who will Be Affected

A myriad of industries globally are likely to get benefited due to easy access of genetic resources and associated traditional knowledge that was kept protected by the local community and was hard to procure in absence any established protocol. Because of the transparent, fair and equitable sharing of benefits derived from commercial/R&D use of genetic resources, the local community or provider country would be motivated to offer their natural/genetic resources, and tradition knowledge to industry. However companies in the pharmaceutical industry, agriculture space, and FMCG/CPG are likely to get impacted due to the profit sharing clause of the protocol and will have to carefully evaluate their long term sourcing strategies, new product launches, brand positioning etc since they would be expected to share their profits with local communities for not only using the original resource, but also for any derivative products developed from it.

Intellectual Property Rights (IPR’s)

As the genetic resources and traditional knowledge is transfers from provider country to the user (industry), property rights including intellectual property rights (IPR), are the most relevant critical factors in the access and benefit sharing of genetic resources (ABS) concept. There are two possibilities that exist for strengthening the property rights of resource managers. On the one hand, national governments can ensure that the local level participates in the property rights over biodiversity and the benefits that arise from their use. On the other hand, international and national patent law requires the disclosure of the origin of genetic resources when IPR’s are granted.

It is hoped that the Nagoya Protocol would address the imbalance arising from property rights distribution. The Protocol has strengthened the local level by asking the parties to take legislative, administrative or policy measures to ensure that benefits arising from the utilization of genetic resources that are held by indigenous and local communities are shared in a fair and equitable way with the communities concerned.

High Level observation

The industries that could get major impacted are Pharmaceutical Industries, Health Care Products and its various verticals, fast moving consumer foods (FMCG)/ Consumer Packaged Goods (CPG), Agriculture Products, Non-Commercial Research, and chemical industries etc.

It will also definitely provide the R&D sector with the certainty they need to invest in biodiversity-based research. Further the Indigenous and local communities may receive benefits through a strong legal system that respects the value of traditional knowledge associated with genetic resources.

Also the provider (country) of genetic resources is obliged to receive either monetary or non-monetary benefits which will include a portion of the total revenue generated from the sales of the final product by user from the source (within that country/ region) to the end used. Examples of the monetary and non-monetary benefits include Up-front payments; Payment of royalties; Joint ownership of relevant intellectual property rights; Transfer of technology and expertise etc.

The exploitation of natural resources and small-scale players (farmers) is expected to decrease, and key constituents within the supply chain are likely to obtain higher benefits with the implementation of the Nagoya Protocol.

On the other hand some of the drawbacks associated with this system will be with respect to ownership of patents since with the implementation of new rules and standards set up by various bodies including CBD, ownership of patents could become a serious threat. Also, problems associated with multiple patent ownership can erupt, because of a benefit-sharing scheme.

Companies might  have to look up for  alternative strategies of usage of genetic resources to ensure that it should not fall within the framework of the Nagoya Protocol and also assess the criteria on new product development costs and strategies surrounding it.

As the organizations are required to provide benefits to the provider country, the organizations may increase the market prizes of the products obtained from genetic resources in order to sustain higher profit percentage with shrinking operating margins. Further there will also be an increase in the timeline involved for product development because of various documentations and approvals required to source the products.

Though protocol in its essence has lot to offer, both to the provider and user, its enforceability and compliance may be a real challenge because of the complexity evolved in identifying the amount of profit to be shared, identification of beneficiaries, procedural requirements, technology transfer issues and overlapping property rights.  It is yet to be seen how the signatory countries establishes the procedures and comply with the articles of the protocol.

About the Author: Ms Sugandhika Mehta, Patent Associate at Khurana & Khurana and can be reached at:  sugandhika@khuranaandkhurana.com.

And we thought Java API’s were open?

Oracle vs. Google is truly one of the most amazing IP battles that I have personally observed in the recent past. What millions of developers and customers would have literally thought to have been considered open Application Programming Interfaces (API’s) when it comes to JAVA, is potentially turning out to be proprietary from the perspective of Federal Circuit. This is really an example of a fantastic unsettling discussion that Copyright Infringement always leads one to. The present post would be kept relatively brief given that the magnitude of the case, and potential implications it can have on thousands of software companies and independent developers using Java packets, API’s, classes, and methods, as a platform to develop their software/websites, is unimaginable and cannot be assessed at this stage if Oracle wins the present appeal/case and starts suing entities of all sizes on API/Package infringement. The present article however would not focus on the fair use discussion that Google contends as an argument, and also would not detail about the GPL, Specification License, and Commercial License that are available to developers but rather would try to give the impact that API’s per se, if held copyrightable, can have on people at large.

The aforementioned case started four years back when Oracle bought Java from Sun, and focused on Google’s use of Java API’s in Android, wherein Google was claimed to have copied certain elements—names, declaration, and header lines—of the Java APIs in Android in the process of using Java programming language to design its own virtual machine, the Dalvik virtual machine (VM), for writing its own implementation for the functions in the Java API, and ended up writing 37 packages that were similar to the corresponding Java packets. In 2012, the district court largely sided with Google, saying that the code in question could not be copyrighted. It was held back then that “As to the 37 packages, the Java and Android libraries are organized in the same basic way but all of the chapters in Android have been written with implementations different from Java but solving the same problems and providing the same functions.” Therefore, in view of each API that can, in general, include a plurality of packages, each of which can in turn include a plurality of classes in which exist one or more methods, it was held that, “Ninety-seven percent of the source code (of Google’s Android) in the API packages is different; it’s only the three percent that overlaps that formed the heart of Oracle’s copyright claim. That three percent included packages, methods, and class names. But those declarations—like starting a function with package java.lang—can only be used in certain ways. “In order to declare a particular functionality, the language demands that the method declaration take a particular form”.

However, last month (in May 2014), came a reversal from the federal appeals court, which stated that “Because we conclude that the declaring code and the structure, sequence, and organization of the API packages are entitled to copyright protection, we reverse the district court’s copyrightability determination with instructions to reinstate the jury’s infringement finding as to the 37 Java packages,“. The decision comes as a surprise as Java API’s are extensively used/incorporated in numerous online and offline softwares all over the world, and if access to Java API’s is held copyrightable, sustainable action can potentially be taken against practically any entity/developer that incorporates calls to such API’s without prior license from Oracle. It was on similar lines that Google and digital rights groups argued that APIs should not be copyrightable because developers need them to produce interoperable programs. “An API is dictated primarily by functional requirements, not creativity or aesthetics, even more so than the internal implementation of a piece of software. Copyright protects creative expression, not functionality,” Mitch Stoltz, an Electronic Frontier Foundation attorney said in an e-mail. “Also, the purpose of an API is to enable two pieces of software to interact. While copyright may protect software against copying, it shouldn’t prevent building new software that can interact with existing programs. That impedes creativity rather than strengthening it.”1

In addition, it was also contended by Former Sun CEO Jonathan Schwartz, acting as a witness for the defense, that “These (Java API’s) are open APIs, and we wanted to bring in more people…we wanted to build the biggest tent and invite as many people as possible.” It was for this reason that, according to Schwartz, they had given a go ahead to Google to use the Java API’s till the time they don’t use their brand name “Java”, and had stated that “I’d also like Sun to be the first platform software company to commit to a complete developer environment around the platform, as we throw Sun’s NetBeans developer platform for mobile devices behind the effort. We’ve obviously done a ton of work to support developers on all Java-based platforms, and we’re pleased to add Google’s Android to the list.”.

Few exemplary Java API’s, which form the basis of softwares being built relying on Java can be seen here, wherein these API’s typically form the foundation on which the actual new source/software code is written to get the desired functionality. Therefore, the statements “It’s only the code itself—not the “how-to” instructions represented by APIs—that can be the subject of a copyright claim”, and “So long as the specific code used to implement a method is different, anyone is free under the Copyright Act to write his or her own code to carry out exactly the same function or specification of any methods used in the Java API,” written by the judge of the lower court prior to recent reversal gave a sense of relief to the developers globally, and in case the API’s per se are restricted to use unless through a valid executed license, each access or incorporation of the API would be a violation from the Copyright infringement standpoint.

In sum, the recent reversal by the appeals court stating that “We find that the district court failed to distinguish between the threshold question of what is copyrightable — which presents a low bar — and the scope of conduct that constitutes infringing activity. The court also erred by importing fair use principles, including interoperability concerns, into its copyrightability analysis. For the reasons that follow, we conclude that the declaring code and the structure, sequence, and organization of the 37 Java API packages are entitled to copyright protection.”, brings along with it a sense to otherwise publicly available API’s and how they would be interpreted in case their developers now start claiming infringement by applications that use such interface to connect their software with the other components.

Although the matter is sure to be taken to the highest level of legal remedy available by Google to come to a logical conclusion, assuming the reversal is upheld, the precedent set by the instant case is bound to send a strong message down to every developer who has ever taken advantage of Java or any other coding platform software interface APIs.At the same time, even if it is clear and accepted that Java programming language is open is free for anyone to use, it is the very use of these Java Packages (API’s) that enables significantly shorter software development time and reduction on overall software cost, and therefore, at this stage, its even unimaginable as to the impact that non-allowance of use of most commonly used API’s such as for string manipulation, java.lang, java.text, object creation, Java SDK, HTML manipulation, among other heavily used APIs can have on software coding time, manpower cost, incremental cost that customers are going to pay when enforcement starts happening left, right, and center. A brief call with a close friend and technical architect at a large Indian Software development company a few days back also helped me learn that Oracle is already in the process of making Java API’s paid and asking each company to enter into a commercial license, making most of these Indian companies to look out for other avenues such as Open JDK to escape such an inconvenient position.

  1. http://arstechnica.com/tech-policy/2014/05/oracles-java-api-code-protected-by-copyright-appeals-court-rules/