Spicy IP Weekly Review: December Week 4

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This week has understandably been a little slow in terms of the posts, given most of the team are busy just like the readers to celebrate the end of yet another eventful year.

Prashant started it off with the announcement of a taxation law conference jointly hosted by NLSIU, Bangalore and Tax India Online, due to be held on January 6, 2013 at Bangalore, which will be focusing on the developments since the proposed introduction of General Anti-Avoidance Rule in the Finance Act, 2012.

This was followed by another post by Prashant, wherein he’s strongly criticized the boycott of Justice Valmiki Mehta of Delhi High Court by the DHCBA and physical barricading by the DHCBA members of the doors of Justice Mehta’s courtroom. The grounds that so far have been advanced for said boycott, including Justice Mehta’s ‘excessive harshness in imposing costs on an unprecedented scale’ and his ‘demeanour on the Bench being wanting of his august office’, appear to be flimsy at best. 

Yet another post by Prashant stands next in queue, this time containing a critical analysis of the Draft Guidelines on Biotechnology Patents proposed by the Indian Patent Office, highlighting issues such as morality patents, bar against patenting of micro-organisms, therapeutic efficacy u/s. 3(d) and method of treatment patents.

Next in line is a guest post by Madhulika Vishwanathan in the Spicy IP Fellowship Post Series, wherein she has referred to few landmark judgments in 2012 pertaining to the Indian pharmaceutical patent industry, including the grant of compulsory license to Natco Pharma, revocation of the Sunitinib patent owned by Pfizer/Sugen, the Roche-Cipla patent infringement suit, revocation of India’s first pharmaceutical product patent etc. Mention was also made of global efforts towards harmonization of patent laws, such as the US Patent Reform Act and the EU Unitary Patent System. 

Finally, I had put up a brief post highlighting a decision by the Indian Patent Office to grant a patent to the polymorph of a known substance, overcoming the objections u/s. 3(d) on the ground that the said polymorph has improved the therapeutic efficacy of the original form. 

International News

In the familiar Samsung-Apple tussle, U.S. International Trade Commission Judge Thomas Pender has recommended a ban on Samsung imports of the infringing products and specified a high bond (88% of the value of the infringing products) Samsung has to post if the ban is enforced and Samsung still wished to keep selling the products during a 60- day period when President Obama could overturn the ban. However, by way of a breather to Samsung, Apple has agreed to drop Samsung Galaxy SIII Mini from the patent lawsuit, after Samsung said it was not offering to sell the product in the crucial U.S. market. 

Meanwhile, Apple has filed for a patent for an invention improving the overall functionality of a stylus. Termed Active Stylus, it describes a process by which a stylus, outfitted with an electrode at the tip, can interact with a "capacitive touch sensor panel" and allow users to tap around on menus, buttons, and text fields. The objective is thus to improve accuracy while maintaining costs.

Asahi Kasei Corp.’s Zoll unit has filed a suit against Royal Philips Electronics’ Respironics Inc. before the US District Court of Delaware, alleging infringement of a U.S. patent with equipment used to monitor patients being treated for sleep-disordered breathing.

The readers, who’re also avid gamers and regular users of the Nintendo Wii video game console, may be interested to know that the company has recently been granted a patent on a technology that makes it possible to present a 360-degree panoramic view of a scene displayed on the game controller.

In the gaming technology front, Intel has received a patent on a technology that could help prevent some accidents caused by too-vigorous players of computer games. The technology will allow sensors to be put in the console that detect the bodily movement of the user and the proximity of surrounding objects.

In the Middle-Eastern region, a comprehensive Published Patent Search Service (PPSS) has recently been launched by the AMMAN-Abu-Ghazaleh Intellectual Property, which would determine patents’ availability for use and registration and evaluate whether such patents conflict with previously existing rights owned by third parties.

In copyright developments, Sylvester Stallone has successfully defended an infringement suit brought against his action-packed movie Expendables by Marcus Webb of Stamford, Connecticut, who’d claimed that the movie infringed the copyrights for a screenplay he had written.

Finally, Microsoft has won a suit in U.K. against Motorola, invalidating the latter’s patent protection for technology synchronizing message statuses across multiple devices on the ground of obviousness of technology used.

Last but not the least, in true celebratory spirit, IP Watchdog’s Gene Quinn and Angel Krippner have come up with a witty list of patentable inventions suitable for the New Year’s Eve celebrations, including safety champagne cork, device for launching confetti, noisemakers etc.

That’s all for this week, folks. The Spicy IP team wishes you a very happy 2013 and hopes to make it worthwhile by delivering a lot of spicy IP news and developments right to your screen.

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Patent Office grants Polymorph Patent after rejecting S.3(d) Objection

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In a rather interesting turn of events, the Indian Patent Office has recently granted patent for the polymorph of a known compound, notwithstanding objections u/s. 3(d) of the Patents Act, 1970. Following are the details of the judgment:

Application Number: 106/DELNP/2008

Applicant’s Name: M/S ALFA WASSERMANN S.P.A., Italy.

Date of Decision: December 26, 2012.

Controller’s Name: Hardev Karar, Deputy Controller of Patents and Designs, Patent Office, New Delhi.

Facts: The application was filed for “POLYMORPHIC FORMS OF RIFAMIXIN, PROCESS FOR THEIR PRODUCTION AND USE THEREOF IN MEDICINAL PREPARATIONS” on January 3, 2008. The main non-procedural objections to the amended claims as voiced by the Examiner were as follows:

Some of the claims defined a mere admixture resulting only in the aggregation of the properties of the components and it was not clear whether they acted together to provide a technical effect greater than just the sum of the components.

Some of the claims fell under the S. 3(d) prohibition, since they defined merely a new form of a known substance without any enhancement in known therapeutic efficacy thereof.

There was lack of inventive step as per prior art documents and hence the subject matter did not constitute an invention u/s. 2(1)(j)(a).

One may bear in mind the fact that this hearing was held u/s. 15 and not as a pre-grant opposition u/s. 25.

Judgment: Following the arguments of the Applicant’s counsel in favour of the amended claims, the Controller held that the invention under consideration comprises a synergistic composition and has improved pharmaceutical properties. The enhancement in efficacy lay in the fact that the polymorph had an in vivo absorption level of about 100 times lower than the original form, resulting in reduction of the toxicity 100 times due to absorption. Therefore, the Controller was of the opinion that the disclosure by the Applicant for proving efficacy (i.e. same therapeutic value with 100 times less toxicity of the new polymorph of this invention) was appropriate until someone interested proved contrary to it. Hence the claims were set free of the clutches of S. 3(d), with the qualification that they might be examined in stricter sense in the proceeding if arising out of the opposition u/s. 25 and/or Revocation.

With regard to the inventive step objection, the Controller, after examination of the prior art documents, held that not only the finding of polymorphs of Rifaximin was unobvious over the prior art, but in addition, the finding of different polymorphic forms of Rifaximin had shown that a compound known to have a uniform property in fact is comprised of various polymorphic forms of said compound having different properties in the term of absorption. This objection was thus also set aside.

The other technical and procedural objections by the Examiner were also set aside by the Controller.

Decision: The patent was granted to the polymorph on the basis of the amended claims.

This decision may well indicate the beginning of a trend by the Patent Office to be willing to overlook S. 3(d) objections to the grant of patent to a polymorph in the presence of proven enhanced efficacy of the original form. This will be a welcome news indeed for the proponents of the school of thought firmly believing that polymorph patents will increase cost efficiency (see here). The Spicy IP team thanks Mr. Sandeep K. Rathod for bringing this matter to our attention.

 

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Guest Post: Pharma patent developments in 2012 - A review

As 2012 draws to a close, Madhulika Vishwanathan brings us a concise review of the year that was, for the Indian pharmaceutical landscape. Madhulika is a qualified patent agent, with a Masters in Pharmacology from UDCT, Mumbai. She has previously worked in the patent cell of a Mumbai based biotech company. This is Madhulika's second post in our SpicyIP Fellowship application series. Her previous post is available here. 

Year 2012 in retrospection: Cases which changed the Indian pharmaceutical patent landscape

As 2012 fades into memory, here is a brief review of some of the cases which transformed Indian pharmaceutical patent landscape. In 2012, India saw a lot of firsts, right from the grant of first compulsory license to the first post-trial pharma patent ruling.

In a pathbreaking judgment which has been exhaustively and comprehensively covered hereand here, the Controller General of patents granted a compulsory license to NATCO pharma to manufacture sorafenib tosylate (patented by pharmaceutical multinational Bayer). On observing that: (i) reasonable requirements of the public were not satisfied (the drug was accessible only to a little above 2% of eligible patients) (ii) drug was not "reasonably affordable" to the public (priced at ₹2.8 lakh for a month’s treatment) (iii) Non-Working of the Patent (working of patent was construed as local working i.e. manufactured to a reasonable extent within the territory of India), a compulsory license was issued under section 84 of Indian patent act. While this decision raised many eyebrows and was widely debated in the United States, it appears to be a case of the pot calling the kettle black, since compulsory licensing has been used there as an effective anti-trust remedy against patent abuses since long.

Sunitinib, patented by Pfizer/Sugen, a drug used to treat abnormal protein kinase activity was revoked by Indian patent office in a post grant opposition by Cipla on the grounds of obviousness. However careful scrutiny revealed that the decision may have been tainted by hindsight bias. This case is covered extensively here and here .

Roche vs. Cipla patent infringement suit was India’s first pharmaceutical patent litigation in the Post TRIPS era. The verdict was a much awaited one and was closely observed by one and all. While the verdict was in favour of generics and affordable healthcare, it was flawed in the sense that it blurred the distinction between two separate issues of validity and infringement. An excellent analysis of the article can be found here.

India’s first pharmaceutical product patent pegylated interferon alfa-2a (a medicine used to treat Hepatitis C patented by Roche) which survived a post grant opposition was ultimately revokedby the Intellectual Property Appellate board (IPAB) on the grounds of obviousness and not meeting the criteria set out in Section 3(d), much to the delight of patient groups and public health activists. The decision also held that patient groups fall within the purview of the term “person interested” as noted in the Indian patent act. This interesting decision has been covered here.

Meanwhile, 2012 saw the rest of the world trending towards harmonization of patent laws. In one of major changes to patent law in the past 6 decades in US, Leahy Smith America Invents act (patent reform act) was signed into law on September 16, 2011, with a majority of the changes coming into effect in 2012 and 2013. The act brings US laws in alignment with the practice of rest of the world. Major changes include switching from first to file system to first inventor to file thereby eliminating interference proceedings, and the introduction of post grant review amongst others.

After forty years of striving, EU has finally taken a giant stridetowards a unified patent system recognized automatically in 25 EU countries except Spain and Italy. The Unitary patent system which is likely to come into effect in 2014 will be overseen by a unified patent court and will most probably do away with the need for cumbersome patent translations.

Year 2013 could pave the way to some important developments as well; the US Supreme court has granted certiorari and will hear the Myriad genetics case limited to a specific question “Are human genes patentable?” Also, the final verdict of the Indian Supreme court on Novartis Gleevec/Glivec case is also expected in 2013. As we wait with bated breath for the verdicts on these cases which would have powerful implications for pharma-biotech industry, it would be very interesting to see how 2013 shapes up.

Here’s to hope!! As the inimitable genius Einstein once said, “Learn from yesterday, live for today, hope for tomorrow. The important thing is to not stop questioning.”

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The IPO’s draft guidelines for biotechnology patents – A cause for worry?

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Close on the heels of finalizing the guidelines for examination of patent applications related to traditional knowledge (TK) and biological materials, the Controller General of Patents has recently published guidelines for the examination of ‘biotechnology patents’. The guidelines can be accessed over here and the public notice can be accessed over here. 

Comments on the same are due by the 11^thof January, 2013. I invite our readers to send in guest posts on the issue, to be published on Spicy IP.

Before discussing the new guidelines, I must voice my concern with the manner in which the guidelines for TK have been finalized. Why has the Controller General not published any of the responses received by the Patent Office? The DIPP always publishes all of the responses it receives to its discussion papers. Why pay only lip service to the process of public consultation? We deserve to be informed on how the guidelines have been received by the patent community.

With regard to the draft guidelines for biotech patents, it appears that the patent office has spent quite some time in preparing these guidelines. Although the guidelines fail to expressly state so, it should be remembered that, like the Patent Office Manual, these guidelines, do not have the force of law. They have not been prescribed under any provision of the Patents Act, 1970 and as such should not have any binding effect on the Controllers & Examiners involved in the examination process.

What I find particularly disturbing is the numerous examples and the definitive language used in the guidelines. This is not in keeping with the conventional practice of using manuals and guidelines to only collate judicial interpretation of patent law, in order to update the examiners and controllers on the latest judicial precedents along with patent office practices in past cases. Manuals and guidelines cannot be used to prejudge cases. 

   

The draft guidelines for biotech patents: The general theme of the current guidelines is aimed at increasing the standards of patentability for biotech patents and if implemented, I can only assume that these guidelines will make it very, very difficult to secure biotech patents in India.

I’ve discussed a few of the problematic issues with these guidelines below:

(a) The morality patents: On page 11, the guidelines deal with the impact of Section 3(b), which prohibits the patenting of inventions contrary to morality. The guidelines interpret this provisions to prohibit the following inventions: “A few non limiting examples may further clarify the issues: (a) a process for cloning human beings or animals; (b) a process for modifying the germ line of human beings; (c) a process for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to man or animal, and also animals resulting from such process; (d) a process for preparing seeds or other genetic materials comprising elements which might cause adverse environmental impact, like terminator gene technology; (e) uses of human embryos for commercial exploitation.”

Two issues arise with the above conclusions:

(1) Since when has the patent office started bothering itself with ‘terminator genes’ and how do ‘terminator genes’ offend anybody’s morality, especially when the Ministry of Agriculture seems to be encouraging Monsanto’s use of such genes? Is the Patent Office trying to call the Agriculture Minister Mr. Sharad Pawar an immoral man?The insertion of that phrase in the guidelines gives rise to the suspicion that these guidelines have been drafted by certain interest groups who are using the Controller General’s office to push forward their agenda;

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(2) Since when did India have a ‘moral issue’ with using human embryos for commercial exploitation? Although the guidelines do not state so, I am assuming that the prohibition is targeted primarily against harvesting stem cells from human embryos. This issue generated considerable heat in Christian countries where abortion is either prohibited or frowned upon. The situation is drastically different in India where there has been no debate on abortions and if I am not mistaken government hospitals themselves carry out abortions.  

Both of the above examples raise issues of how and why the Patent Office is seeking to define the standards of morality for the future of science. Such decisions are best taken by our elected representative and not bureaucrats. The guidelines on Section 3(b) should therefore be deleted without any mercy for its contents.      

(b) The bar against the patenting of micro-organisms: The guidelines deal with the patenting of micro-organisms under Section 3(c) and Section 3(j) of the Patent Act. Section 3(c) is a standard provision of patent law around the world and prohibits the patenting of scientific principles and discovery of any living or non-living substance occurring in nature. Section 3(j) prohibits the patenting of plants and animals other than micro-organisms.

The guidelines, on page 12, prohibit the patenting of micro-organisms which are directly isolated from nature, while on page 16 it states that a co-joined reading of Section 3(c) and Section 3(j) implies that only genetically modified micro-organisms are patentable subject matter.

Why is there is a need to read this provision along with Section 3(c) when Section 3(j) is so clear on the patenting of micro-organisms?

(c) ‘Therapeutic Efficacy’ in Section 3(d): At a time when the issue of interpretation of Section 3(d) is sub judice before the Supreme Court, one would have expected the Patent Office to have inserted a caveat in the guidelines, holding off on the interpretation of Section 3(d) until the interpretation of ‘efficacy’ is settled by the SC. Instead the guidelines declare that only ‘therapeutic efficacy’ of the inventions will be considered.

Should Section 3(d), which was drafted with the intent of checking ever-greening in the pharmaceutical industry, also be applied to the biotechnology industry? Was that the legislative intent?

(d) Method of treatments patents: Section 3(i) prohibits the patenting of “any process for the medicinal, surgical, curative, prophylactic diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products.”

This provision does prohibit certain methods of diagnosis, surgery and cure but the provision has always been interpreted by the patent office to permit the patenting of inventions such as diagnostic kits.

The examples provided by the guidelines, hints at a complete bar on the patenting of any gene-based diagnostics. This issue of gene based diagnostics is complicated. The U.S. Supreme Court has recently agreed to hear an appeal in the Myriad patent case. Given the complexity of the issue, why is the patent office jumping to conclusions, especially when its Manual has always been silent on the issue? It should cross the bridge when it comes to it.  

Conclusion: It will be interesting to see how the biotech industry responds to these guidelines. I can only imagine that their lawyers furiously typing away at their keyboards in preparing a response to these guidelines.  

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Off-topic: Lowering the Bar at the Delhi High Court

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Usually, I try to keep away ‘off-topic’ issues on the blog but some of the recent events at the Delhi High Court, involving the boycott of Justice Valmiki Mehta are simply too shocking to ignore and I felt compelled to discuss the issue on the blog.

Apparently, upset with the way in which Justice Valmiki Mehta was running his court room, the Delhi High Court Bar Association (DHCBA) resolved through its executive committee that “members of the Bar shall boycott the Court” for one day. According to unconfirmed reports, it appears that the boycott was enforced by physically barricading the doors to Justice Mehta’s courtroom, therefore preventing lawyers from entering the courtroom. The notice of the DHCBA and a news report on the same can be accessed over here on Legally India.  

According to the ‘Notice’ published by the DHCBA, calling for the one-day boycott, the DHCBA was upset with the fact that Justice Mehta was “excessively harsh in imposing costs on an unprecedented scale” and that his “lordship’s demeanour on the Bench has been wanting of this august office”. Without giving any specifics of the cases where costs were imposed, the notice which was written in terribly poor taste and calculated to intimidate, if not humiliate the judge, laments how “Conspicuously it looks like that the Bar as a whole can be subjected to the caprices of an ‘knight errand’ despite the fact that it always conducts its business as prudent officers of the Court”.

As if such denigrating language was not enough, the notice also states that its repeated complaints to successive Chief Justices have not resulted in any ‘carminative effects’. I had to look up the meaning of the word in the dictionary, it means and I quote “expelling gas from the stomach or intestines so as to relieve flatulence or abdominal pain or distension”. (Merriam-Webster Dictionary)

Is this the language that the lawyers of the Delhi High Court have been reduced to, especially when they are the ones complaining of ‘brusque remarks’ from the judges of the Delhi High Courts? Is this the language that we expect to hear from ‘prudent officers of the court’?

One would expect a notice of this kind to actually educate its readers on the nature of the complaint instead of indulging in rhetoric, hyperbole and name-calling. Clearly, that is expecting too much because the notice gives absolutely no specifics of Justice Mehta’s conduct. Which case, how much costs, what were the circumstances involved? How can you condemn any man, more so a judge, without even explaining the specifics of his alleged crime?

The greater crime however is the ‘resolution’ that follows from the 2 paragraph charge-sheet: the first being the boycott and the second being the brazen demand that Justice Mehta, who currently is an additional judge, not be recommended “for a further extension of his tenure or for confirmation”.

Before being elevated to the Bench in April, 2009, Justice Mehta was a Senior Advocate, of considerable repute and who had a booming private practice before the Delhi High Court. Like most of his brethren, he could have presumably continued to mint money at the Bar. Yet, he opted for public service, a difficult choice for any successful lawyer. That Justice Mehta is hard-working is beyond doubt and that is evidenced by the fact that since he was elevated to the bench, in 2009, he has delivered, according to the website of the Delhi HC, a total of 1,203 judgements, which is more than double  the average of the Delhi High Court. Since lawyers in India today are the biggest and most inefficient cogs in the judicial machine, with their constant requests for unwarranted adjournments, it can only be assumed that Justice Mehta achieved this prodigious feat of delivering 1203 judgements, by running a strict courtroom with few adjournments and heavy costs on errant lawyers. Costs imposed by a single judge, can always be appealed and in a fit case, set aside.        

Given his stellar record on the bench and the ever-present option to appeal his erroneous orders, one would have expected the DHCBA to make out a case, which goes beyond name-calling and flatulent pejoratives. 

Instead such intimidation only serves to reduce the morale of judiciary and coerce judges to be lenient towards the coterie of lawyers who are powerful within bar associations. It is quite obvious that the notice seeks to make an example of Justice Mehta and send out a signal to the remaining judges in the High Court. 

As for the reports of lawyers physically barricading his courtroom, if true, this is a clear cut case of contempt of court since it results in interfering with the administration of justice, more so than the alleged misreporting by the media of Supreme Court proceedings. Unfortunately, contempt proceedings almost never work when it comes to bar associations or lawyers and the DHCBA is going to get away scot-free with its conduct.

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SpicyIP Events: The First NLS-TIOL Taxation Law Conference

The Moot Court Society of National Law School of India University, Bangalore, in association with Tax India Online, is organising the 1^stNLS-TIOL Taxation Law Conference on 6^th January, 2013 along with the NLS TIOL Moot Court Competition. The Conference seeks to trace out the developments since the proposed introduction of General Anti-Avoidance Rule in the Finance Act, 2012. While the Shome Committee has made certain recommendations that provide clarity with respect to the application of GAAR, some recommendations are a cause for concern. Further, the manner in which the GAAR  is to be applied in India, under the Income Tax Act and under the proposed Direct Taxes Code remain controversial and must be debated. The entire concept note can be accessed over here.

The Conference will witness a congregation of persons of eminence from the Legal and Accounting fields – Mr. Mohan Parasaran, Additional Solicitor General, India, Mr. Nishith Desai, Founder, Nishith Desai & Associates, Mr. Nageswar Rao, Partner, PDS Legal, Mr. Parmanand Kincha, Partner, M/s H C Khincha & Co, Bangalore, Mr. Rupesh Jain, Partner, Vaish Associates, Mr. P.K. Prasad, Director of Income Tax, Bangalore. The session will be moderated by Mr. Mihir Naniwadekar, Advocate, Bombay High Court.

The Conference will be organised on Sunday, 6^th January, 2013 at Vivanta by Taj, Bangalore. Registration Fee for the Conference is Rs. 1500 for Professionals and Rs. 200 for Students. Details will be put up on www.nls.ac.in  and http://www.taxindiaonline.com/RC2/adpage/NLS_TIOL_MOOT.htm shortly. For any queries, kindly mail nlstaxmoot@gmail.com or contact the following for details:

Mr. Dheer Bhatnagar:      +91 9986538654

Ms. Jahnavi Sindhu:        +91 9538960420

Ms. Deekshitha Ganesan:  +91 8050055308

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Spicy IP Weekly Review: December Weeks 2 and 3

For the readers of Spicy IP, we bring yet another sum-up of IP news and events in the past few days to mark the festive season.

It started with Rajiv coming up with the list of the 102 decisions that the Controller’s Office has come up with in November, 2012.

 

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This was followed by a guest post from Snigdha Roy, a 3rd Year student from GNLU, as the first installment in the Spicy IP Fellowship post-series. She discussed some of the problems that modern copyright law has presented to the print disabled and commented upon the mixed success of efforts with the new copyright amendments on the one hand and the failure of the International Treaty of the Blind to make any headway on the other. Swaraj followed this up with a subsequent look into the various reports and opinions about the treaty.

Rajiv then came up with a penetrating analysis of an IPAB decision (Bayer v. UOI), wherein the practice of filing multiple applications for the same invention and calling them as divisional applications was formally put to an end. 

 

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This was followed by Prashant reporting an US move of appointing Justice Sri Krishna, a retired judge of the Indian Supreme Court, as a neutral witness in the Cadila Healthcare Ltd. Case to render an opinion on the position of ‘in-house’ counsel in the Indian legal system and whether the communications involving such a counsel were confidential under Indian law.

Prashant then came up a brief examination of the validity of the claim by Big Pharma companies that they are targeting only the prosperous middle class which can afford their drugs and not the poor of the country, to whom they supply their drugs free under their patient assistance programs.

A post was then put up extending the eligibility of the Spicy IP Fellowship Program to all interested persons and not only students and recent graduates.

A guest post by Amshula Prakash, a 4th Year student from NLSIU, analyzing certain aspects of the Apple-Samsung tussle, was the next in line, as a part of the Fellowship post-series.

Another guest post in the Fellowship series followed forth, this time by Madhulika Vishwanathan, an experienced patent agent, critiquing the Guidelines for Processing of Patent Applications relating to Traditional Knowledge and Biological Material.

A post of mine was to follow this, on a recent market analysis by Business Standard on the adverse repercussions of the Indian government’s decision to waive the requirement of payment of such royalty by Indian companies to multinational corporations to be subjected to prior government approval (by the Project Approval Board in the Department of Industrial Policy and Promotion), instead allowing such payments up to any amount by the automatic route, with an intention to promote modern technology transfer to India.

Shan then came up with a brief bird’s eye view of the salient features of the National Pharmaceuticals Pricing Policy, 2012 that is due to replace the Drug Policy of 1994 and the industrial reactions to the same.

Finally, Mathews put up an insightful post stating how Section 27 of Geographical Indications of Goods (Registration and Protection) Act, 1999 allows filing of rectification application on a ground of public interest as per the Supreme Court judgment in Hardie Trading Ltd. and Anr. v. Addisons Paint and Chemicals Ltd. and the IPAB order in the Payyannur Ring matter.

International Developments

In true Christmas spirit, Mark Cuban, the owner of the Dallas Mavericks National Basketball Association team and Swedish game developer Markus “Notche” Persson have donated $500,000 to a digital rights advocacy group Electronic Frontier Foundation to “fix” what Cuban says is a broken patent system.

Disney won the contest of its trademark rights over the Winnie the Pooh characters against Stephen Slesinger Inc. before the US Appeals Court.

National Football Scouting Inc., the scouting arm of the National Football League lost a copyright case in the US District Court of Tacoma against a Washington State resident, who wrote about its annual scouting reports for a sports-oriented website.

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Microsoft has won a U.K. ruling invalidating Motorola Mobility Holdings Inc.’s patent protection for technology synchronizing message statuses across multiple devices on ground of obviousness. On another turn of events, Microsoft has been revealed to own a peculiar patent that lets one hug someone over the internet using a robotic pillow!

A group including giants like Apple, Google, Facebook and Amazon has agreed to buy patents from bankrupt Eastman Kodak Co. for about $525 million, gaining the right to use the digital technology to capture and share photos.

In the Samsung-Apple saga, the EU is probing whether Samsung violated agreements to license key patents to other mobile-phone manufacturers on fair, reasonable and non-discriminatory terms, known as FRAND.

The US attaché stationed in Geneva has recently submitted a report accusing local NGOs operating at the WTO and UN agencies of efforts to undermine IP.

On a welcome turn of events, China has announced a legislative amendment being under way to crack down on "malicious" trademark registrations, which have allowed local companies to misuse well-known names and brands.

Finally, at the close of the 28th session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications meeting under the WIPO aegis, dedicated to the future treaty on industrial design law and practice, delegates have agreed to continue working on the draft, as well as pay heed to the divergent views on how to integrate technical assistance and capacity building into the treaty.

 

That's all for now, readers. We'll get back to you once again with the review before the new year begins. Till then, happy reading!

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Filing rectification application under the GI Act, 1999

[*Long Post]
 
As you are aware of, rectification application can be filed under Section 27 of Geographical Indications of Goods (Registration and Protection) Act, 1999 (“GI Act”). I intend to examine whether the aforesaid provision allows filing of rectification application on the ground of public interest. I shall argue in affirmative relying on the Supreme Court judgment in Hardie Trading Ltd. and Anr. v. Addisons Paint and Chemicals Ltd. (“Hardie Trading Ltd”) and IPAB order in Payyannur ring [covered here]. Prashant had earlier inter alia covered this issue here.

Section 27 of the GI Act empowers the Registrar to cancel or vary any registration and thereby rectify the register. The provision gets triggered when an “aggrieved person” applies to the Appellate Board or to the Registrar. Does “aggrieved person” include person acting on public interest? Or does it mean that an applicant is required to adduce evidence to the effect that he is directly harmed by the registration? 

I.                   Hardie Trading Limited

The Supreme Court, in the instant case, examined “person aggrieved” in Sections 46 and 56 of Trade and Merchandise Marks Act, 1958 (“TM Act, 1958”). While Section 46 dealt with the removal of a registered trademark from the register on the ground of non-use, Section 56 dealt with situations where the initial registration should not have been or was incorrectly made.

The Court held that the phrase "person aggrieved" for the purposes of removal on the ground of non-use under Section 46 had a different connotation vis-a-vis the phrase used in Section 56 for cancelling or expunging or varying an entry wrongly made or remaining in the Register. In the latter case, the locus standi would be ascertained liberally, since it would not only be against the interest of other persons carrying on the same trade but also in the interest of the public to have such wrongful entry removed. The Court relied on judgment delivered by House of Lords in the matter of Powell's Trade Mark 1894 (11) RFC 4: "... although they were no doubt inserted to prevent officious interference by those who had no interest at all in the Register being correct , and to exclude a mere common informer, it is undoubtedly of public interest that they should not be unduly limited, inasmuch as it is a public mischief that there should remain upon the Register a mark which ought not to be there, and by which many persons may be affected, who, nevertheless, would not be willing to enter upon the risk and expense of litigation.

Wherever it can be shown, as here, that the Applicant is in the same trade as the person who has registered the trade mark, and wherever the trade mark, if remaining on the Register, would, or might, limit the legal rights of the Applicant, so that by reason of the existence of the entry on the Register he could not lawfully do that which, but for the existence of the mark upon the Register, he could lawfully do, it appears to me he has a locus standi to be heard as a person aggrieved."

On the other hand, if the ground for rectification is merely based on non-use, it does not amount to public mischief by way of an incorrect entry. The non-user does not by itself render the entry incorrect. It gives an affected interested person the right to apply for its removal. An applicant must therefore show that "in some possible way he may be damaged or injured if the trade mark is allowed to stand; and by "possible" I mean possible in a practical sense, and not merely in a fantastic view. .... All cases of this kind, where the original registration is not illegal or improper, ought to be considered as questions of common sense, to a certain extent, at any rate; and I think the Applicants ought to show something approaching a sufficient or proper reason for applying to have the trade mark expunged. It certainly is not sufficient reason that they are at loggerheads with the Respondents or desire in someway to injure them."

It is, thus, evident that the Court drew a clear distinction between Section 46 & 56 of Act. I understand that one may, relying on a part of the observation (which is highlighted), argue that the “person aggrieved” has to be in a similar trade.  I do not agree with the aforesaid interpretation as the observation (which is highlighted) reflected the fact situation presented before House of Lords. Further, it was not an absolute observation as the earlier paragraph (which emphasized on the correctness of register) qualified the following paragraph.
 

As stated by House of Lords, “it is undoubtedly of public interest that they should not be unduly limited, inasmuch as it is a public mischief that there should remain upon the Register a Mark which ought not to be there, and by which many persons may be affected, who, nevertheless, would not be willing to enter upon the risk and expense of litigation.” If the objective is to preclude public mischief and maintain the correctness of register, the ambit of “person aggrieved” cannot be limited to those who are in the same trade.

Section 56 of TM Act, 1958 and Section 27 of GI Act

As evident from the following table, Section 56 of TM Act, 1958 and Section 27 of GI Act are almost identical provisions. The judgment in Hardie Trading, therefore, acquires significance vis-à-vis GI Act.

Section 56 of TM Act, 1958 - Power to cancel or vary registration and to rectify the register	Section 27 of GI Act – Power to cancel or vary registration and to rectify the register
On application made in the prescribed manner to a High Court or to the Registrar by any person aggrieved, the tribunal may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto.	On application made in the prescribed manner to the Appellate Board or to the Registrar by any person aggrieved, the tribunal may make such order as it may think fit for cancelling or varying the registration of a geographical indication or authorised user on the ground of any contravention, or failure to observe the condition entered on the register in relation thereto.
Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to a High Court or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit.	Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the Appellate Board or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit.
The tribunal may in any proceeding under this section decide any question that may be necessary or expedient to decide in connection with the rectification of the register.	The tribunal may in any proceeding under this section decide any question that may be necessary or expedient to decide in connection with the rectification of the register.
The tribunal, of its own motion, may, after giving notice in the prescribed manner to the parties concerned and after giving them an opportunity of being heard, make any order referred to in sub- section (1) or sub- section (2).	The tribunal, of its own motion , may , after giving notice in the prescribed manner to the parties concerned and after giving them an opportunity of being heard, make any order referred to in sub-section (1) or sub-section (2)
Any order of the High Court rectifying the register shall direct that notice of the rectification shall be served upon the Registrar in the prescribed manner who shall upon receipt of such notice rectify the register accordingly.	Any order of the Appellate Board rectifying the register shall direct that notice of the rectification shall be served upon the Registrar in the prescribed manner who shall upon receipt of such notice rectify the register accordingly.
The power to rectify the register conferred by this section shall include the power to remove a trade mark registered in Part A of the register to Part B of the register.

II.                IPAB Order on Payyanur Ring

IPAB was quite unequivocal in SubhashJewellery v. Payyannur Pavithra Ring Artisans when it held that “in Intellectual Property Right related matters be it G.I., Patents or Trademarks the dispute is really not inter-partes alone, there is always the issue of public interest. The Geographical Indication Registrar and this Board must protect this public interest.” (paragraph 32)

GI Registrar’s Order on Tirupati Laddu [Sai Vinod had earlier blogged on the GI Registrar’s Order here.]

Mr. Praveen Raj filed the rectification application as a person who represented public interest. The Assistant Registrar, vide his Order, rejected Mr. Praveen Raj’s petititon inter alia on the ground of absence of locus standi. According to the Order, “the rectification applicant never elucidates how he was wounded by the registration of the product. On the other hand, it is the duty of the rectification applicant to set out fully the nature of the applicant’s interest in the registered product. The rectification applicant was unsuccessful to satisfy this Tribunal on this issue of his interest towards the registered GI.”Further, it was held that the applicant was not involved in similar trade or manufacturing a similar GI product and therefore, had no locus standi.

In the light of Supreme Court judgment in Hardie Trading Ltd and IPAB order on Payyannur ring, the Order is dubious vis-à-vis its merits on the issue of locus standi. If an intellectual property right dispute engrains the issue of public interest (as held by IPAB in its Order on Payyannur Ring), why cannot a “person aggrieved” be a public spirited citizen? If the Registrar and the Board are expected to protect public interest (as held by IPAB in its Order on Payyannur Ring), how can they reject an application filed on the ground of public interest?

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