Saturday, January 22, 2011

Right to Information and Copyright Infringement: Delhi HC Cracks the Whip on DMRC


So the pride of Delhi, DMRC says:

 “I am not an instrumentality of the State, I am entitled to the protection offered to a “ third party” under Section 8(1)(d) of the Right to Information Act and also to the exemption provided to prevent copyright infringement under Section 9 of the RTI Act”

Delhi High Court says:

“No way! You are an arm of the State within the meaning of Article 12 of the Constitution! You dare not hide behind the RTI to conceal your faulty designs which took the lives of 6 people!”

This, in a nutshell, captures the decision of the Delhi High Court delivered on December 24, 2010.

What exactly are the facts? And what are these RTI provisions the DMRC wanted to hide behind?

An architect, Sudhir Vohra, invokes the RTI to seek “all structural drawings of both the pile foundation and the superstructure, including all steel reinforcement details, foundation details, engineering calculations and soil tests", pertaining to the cantilevered bracket of Metro Pillar No. 67 which collapsed on 12th July, 2009 resulting in the death of six persons and injury to several others”

DMRC rejects the RTI application citing Sections 8(1)(a),(d) and (h). Let’s see what Section 8 says:

8. Exemption from disclosure of information.-
(1) Notwithstanding anything contained in this Act, there shall be no obligation to give any citizen,-
(a) information, disclosure of which would prejudicially affect the sovereignty and integrity of India, the security, strategic, scientific or economic interests of the State, relation with foreign State or lead to incitement of an offence;

(d) information including commercial confidence, trade secrets or intellectual property, the disclosure of which would harm the competitive position of a third party, unless the competent authority is satisfied that larger public interest warrants the disclosure of such information;

(h) information which would impede the process of investigation or apprehension or prosecution of offenders;

I can understand that sub-clause (d) makes for a decent legal argument (even if erroneous), but how is sub-clause (a) even relevant to the case? How does disclosure of the designs prejudicially affect the “sovereignty and integrity” of India?! (unless the DMRC fears that disclosure of the faulty designs could incite members of the public into committing an offence..which would be a justified fear...)

As for sub-clause (h), I really can’t fathom how sharing the designs with a member of the public, and that too an architect, can impede the process of investigation of the accident by the police...sometimes I think parties just miss the point about litigation; it isn’t just about the law, it has got almost everything to do with public perception of a stance taken by a party, even if it is rooted in law. 

And Courts too aren’t completely immune to these perceptions, so the sensible thing to do would be to take a stance which is balanced, and not anything and everything that is available under a statute.

As far as sub-clause (d) is concerned, the Court categorically held that DMRC, being an agency of the State, did not fall within the meaning of “third party”. Even if it did, I would think the larger public interest warrants disclosure of the information because in this country, you just can’t assume that an investigation by the establishment (particularly of its own conduct) would be independent and reliable. So disclosure must be made to other members of the public who wish to probe such information with a fine-toothed comb.

On Section 9, which reads thus:

9. Grounds for rejection to access in certain cases- Without prejudice to the provisions of Section 8, a Central Public Information Officer or State Public Information officer, as the case may be may reject a request for information where such a request for providing access would involve an infringement of copyright subsisting in a person other than the State

the Court again clearly held that Section 9 vested the State with the right to reject a request for information only if its disclosure involved or amounted to infringement of the copyright subsisting in a person other than the State. Since the Court had already deemed DMRC as falling within the State, Section 9 was held inapplicable to it.

What surprises me is that an organisation helmed by someone so scrupulous as Mr.E.Sreedharan (inset), has taken a stance which goes against the very values he professes and practices. 

Anyways, this judgment was delivered by one of the most erudite Judges I have heard and seen in action- Hon’ble Justice Muralidhar. It is an absolute delight and education to see Justice Muralidhar apply his incisive mind to a case and explain his reasons for interpreting a provision of the law in a particular manner. Not just that, his judgments have an altruistic tone to them, which are finely balanced. This makes them all the more delightful to read. 

One hopes we have more of his breed in our Courts

I thank Sneha Jain for sharing this update with me!

Wednesday, January 19, 2011

Snippets: Hike in Fees for Trademark Filing Notified

The IPDTO has notified the increase in fee for trademark filing from Rs.2500 to Rs.3500 per application. For applications which were filed between 29.12.2010 and 13.01.2011, applicants need to shell down Rs.1000 to meet the current fee requirements. 

The last date for payment of the deficiency fee has been extended to 28.02.2011.

Hearing Mandatory in Pre-grant Opposition, When Requested: Bombay High Court

In a decision delivered in a writ petition last November, the Bombay High Court interpreted Section 25(1) of the Patents Act to categorically hold that when a pre-grant opponent requests for a hearing, it is mandatory on the part of the Controller to grant the pre-grant opponent such a hearing.

The decision was delivered in a writ petition filed by Neon Labs against the order of the Patent Controller granting a patent to Troika Pharma pursuant to Rule 55(6) of the Patent Rules, 2003 in a pre-grant opposition.

The facts of the case in brief were as follows:

1. Neon had filed a pre-grant opposition to the first set of claims filed by Troika. During the hearing in the opposition proceedings, Troika sought to amend the claims to overcome the objections raised in the opposition.

2. When the amended claims were filed, the Controller sent the amended claims to Neon. Neon again objected in writing to the claims and cited the very same evidence/prior art documents which were filed in opposition to the original set of claims. Neon again sought a hearing on the amended set of claims.

3. Neon never heard from the Controller until it discovered later that the opposition had been rejected and the patent granted to Troika.

4. Neon filed a writ petition against the order on grounds that it ought to have been granted a hearing to vent its objections to the amended claims.

In response to the contentions of Neon in its writ petition, the Controller filed an affidavit saying that since Neon had re-filed the same set of prior art documents to support its opposition to the grant of the patent to Troika, the Controller did not deem it necessary to grant a re-hearing since no new prior art was cited. Also, in the Controller’s opinion, the amended claims overcame the prior art cited.

In other words, according to the Controller, non-grant of a hearing did not result in prejudice to the pre-grant opponent. Therefore, according to him, the pre-grant opponent was whining for no reason.

The Bombay High Court took the view that once a hearing is requested by a pre-grant opponent under Section 25(1), there is no room for exercise of discretion by the Controller since the provision says the Controller shall, if requested by such person for being heard, hear him”.

Earlier when the provision used “may” instead of “shall”, it was permissible for the Controller to exercise his discretion. But even then, principles of natural justice would have required him to grant such a hearing, particularly when the pre-grant opposition mechanism essentially serves public interest.

This is evidenced from the fact that “any person” may use the pre-grant mechanism to oppose the grant of the patent to the application. Consequently, the presence of “shall” in the Act today makes it all the more incumbent on the part of the Controller to grant such a hearing when it is requested for.

Not just that, since the claims were amended, it was necessary to grant a hearing as if the amended claims were a new set of claims. In other words, merely because a hearing had been granted for the first set of claims, it is no argument on the part of the Controller to say that a second hearing for the amended set of claims is not contemplated by Section 25(1). Such a take would go against the very purpose of the pre-grant proceeding.

Common sense also tells me that merely because the opponent, Neon labs, filed the same set of prior art documents in response to the amended claims, it does not follow that the exercise is redundant. This is because the same set of prior art documents could apply differently to the two sets of claims, original and amended.

Therefore, it wouldn’t be correct to assume that since these documents had been considered in relation to the original claims, they would not serve to repudiate the amended claims.

On the issue of prejudice, the Court took the view that proof of prejudice independent of breach of fair play principles is a requirement typically only in disciplinary proceedings, and not in quasi-judicial proceedings such as a pre-grant opposition.

In other words, it was not necessary for a pre-grant opponent to show that the non-adherence to principles of natural justice had caused real prejudice to him; mere breach of such principles would suffice to vitiate the entire proceedings, and hence the order.

I think this decision is important given the fact that entities/persons which/who are not entitled to invoke the post-grant opposition mechanism and the revocation proceedings (since both permit only “person interested”), must be given a full and fair opportunity to utilise the pre-grant opposition proceedings. A “full and fair” opportunity includes a hearing, when sought.

Monday, January 17, 2011

Snippets: A Few GIs More

This is probably stale news, but reportedly, last November, the famed Surat Zari was granted a GI. The grant was subsequently notified in the GI Journal No. 31 (I could call it ‘GI Jo’) under Rule 41 of the GI Rules, which mandates publication to invite opposition to the grant of a GI.

Zari generally refers to metal embroidery on garments in combination with yarn and silk or cotton. The application was filed by 5 manufacturing associations representing Surat Zari. The craft has been practiced in Surat predominantly by the Rana Community. It is believed that 1.5 lakh people derive their livelihood directly or indirectly from this industry.

In addition to Zari, the famed Guntur Sannam Chilli too has been granted a GI. In all, the grant of 194 GIs was notified in the December GI Journal.

Sunday, January 16, 2011

Kraft Foods v. Britannia Update: Summons Issued to Britannia

I had earlier blogged on Kraft Foods suing Britannia for copyright and trademark infringement in relation to Kraft’s “Oreo” biscuits. 

On the 4th of January, 2011, the Delhi High Court issued summons to the Defendant, Britannia Industries, in the suit as well as the “application” (the Delhi high Court website doesn’t say if the application is the application for interim injunction, but I am assuming so).

The matter’s now listed for January 25, 2011. We’ll keep our readers posted on the developments in the case.

Snippets: Beware of Phony “Official” Trademark Office Sites!

The Indian Patents, Designs and Trademarks Office (IPDTO) has issued a notice asking members of the public to beware of websites which represent themselves as being officially associated with the IPDTO. The notice is also a cease and desist notice to all such entities which are operating the phony websites.

The IPDTO has threatened the entities/persons which run the sites with criminal proceedings if they don’t shut shop within a week from the date of the issue of the notice (the notice was issued on January 10, 2011).

It could invoke Section 108 of the Trademarks Act, 1999, which provides for a penalty against any person who represents his place of business as being officially associated with the Trademarks Office. The penalty includes an imprisonment which may extend to two years.

I request our readers to pass on this information to as many of their colleagues and clients as possible to prevent them from being taken for a ride.


Friday, January 14, 2011

Weekend Videos: Copyright

In the Weekend Videos series, this weekend we have linked to a few videos which have a witty take on various facets of copyrights. Hope they tickle your funny bones!

Snippets: Draft Patents Rules, 2010 Notified, Comments Invited

The Draft Patents (3rd Amendment) Rules, 2010 have been notified. The Department of Industrial Policy and Promotion has invited comments on the Draft Rules. The comments may be sent to sk.lal@nic.in.

We welcome our readers to share with us their thoughts on the Draft Rules.

Good Luck for the Patent Agent Examination!

To those 1818 candidates appearing tomorrow for the Patent Agent Examination, I wish all of them the very best of luck!

Although I applied, I will not be appearing for the exam this year. I hope the pass percentage this year is better than the last year’s. I request all our readers who are appearing for the exam, or who make it a point to go through the question paper every year, to share with us their views on the exam.

All The Best again!

Thursday, January 13, 2011

Section 62 of the Copyright Act and Extra-Territorial Jurisdiction? Not Long Enough...

Banyan Tree may have clarified the import of Section 62 of the Copyright Act, 1957 significantly, yet there seems to be a pervasive opinion that Section 62 vests Indian Courts with unlimited long arm jurisdiction even in strictly and purely extra-territorial situations.

Somehow I am not convinced that Section 62 empowers Indian Courts to seize a matter which would rightly fall within the seisin of a foreign Court. What are the reasons for holding this view?

Even if one did not have the benefit of referring to the view taken by a Division Bench of the Delhi High Court in Banyan Tree, the issue may be approached as follows:

A. Section 62 of the Copyright Act is a provision, which cannot be invoked in the absence of a cause of action arising with respect to the Indian copyright within the territory of India. In other words, it is a stretch of an argument to contend that Section 62 vests Indian Courts with the power to entertain a suit instituted to seek redressal for an act of “infringement” which has been committed outside the territory of India.

B. In other words, a so-called “infringing act” which has been committed outside the territory of India is not an infringement of the Indian copyright, since the copyright granted under the Indian Act is purely territorial in nature. In my opinion, there is no such thing as an “international copyright” under the Indian statute.

C. Further, long-established principles of interpretation of statutes, as applied by Indian Courts with respect to Indian legislations, clearly postulate that the underlying presumption of any Indian statute is always against extra-territorial application of Indian law. For an Indian legislation to have unlimited long-arm jurisdiction beyond Indian shores, there must be an express provision to that effect.

D. There is no such express provision in Section 62 which clearly spells out extra-territorial application. If it is contended that since Section 62 does not link jurisdiction with cause of action, it has an extra-territorial reach, one could extend the argument and prove its inherent fallacy (applying the principle of Reductio ad absurdem).

To prove the fallacy, let’s take a look at Section 20(a) of the Code of Civil Procedure:

Section 20(a) of the CPC:
Subject to the limitations aforesaid, every suit shall be instituted in Court within the local limits of whose jurisdiction-
(a) the defendant, or each of the defendants where there are more than one, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business, or personally works for gain

Nowhere does Section 20(a) contain a whisper about cause of action. Does this mean it is available for us to argue that a suit may be instituted at the place of residence or business of the defendant, even if the cause of action has not arisen anywhere within the territory of India??? NO!

What I seek to convey is that the default presumption must always be that a legislation can speak of only those acts which fall within the territory over which the legislature holds sway i.e. India. For this presumption to be rebutted, there must be an express provision. In the absence of any such presumption, the statute applies only and only to acts which have been committed within the territory of India.

Is Section 62(2) of the Copyright Act an exception to this rule? Let’s take a look at the provision itself:

62. Jurisdiction of court over matters arising under this Chapter – (1) Every suit or other civil proceeding arising under this Chapter in respect of the infringement of copyright in any work or the infringement of any other right conferred by this Act shall be instituted in the district court having jurisdiction.

(2) For the purpose of sub section (1), a "district court having jurisdiction " shall notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908), or any other law for the time being in force, include a district court within the local limits of whose jurisdiction , at the time of the institution of the suit or other proceeding, the person instituting the suit or other proceeding or, where there are more than one such persons, any of them actually and voluntarily resides or carries on business or personally works for gain.

Sub-section (1) of Section 62 clearly speaks of infringement of a right conferred by this Act. Every legislation typically spells out its scope and extent in Section 1, which reads thus:

It extends to the whole of India

This means that what has been granted for enjoyment within the territory of India can be “infringed” only within the territory of India. The consequence of this is that, all that Section 62(2) confers on the right owner, is the power to institute a suit in his own place of residence or business, provided there is a cause of action which has arisen within the territory of India.

This provision is a departure from traditional principles which require the suit to be instituted at the defendant’s place of residence or business or where the cause of action has arisen inside India. This explains the non-obstante clause in Section 62(2) which says “notwithstanding anything contained in the Code of Civil Procedure, 1908”.

In other words, Section 62(2) is merely a limited departure from the principles governing jurisdiction only insofar as it allows the owner of a right under the Copyright Act to institute a suit at a place of his residence or business, provided the right conferred under the Copyright Act has been infringed anywhere within the territory of India.

Therefore, I would think any attempt to seek to apply Section 62(2) to acts which have been committed outside India, amounts to subversion of the provision to suit one’s convenience.

Opinions and Corrections are, as always, welcome!

Saturday, January 8, 2011

No Primary Infringement, No Secondary Infringement: An Interesting Canadian Case – Part II

This post continues from Ananth’s last post; I (Sai) am posting it on his behalf because he's tied up.

Ananth’s Second Post in the Series
We had stopped yesterday with the facts and the contentions of the decision in Euro‑Excellence Inc. v. Kraft Canada Inc. 

This post is exclusively dedicated to the analysis of the ultimate verdict. Before getting straight on to the verdict, the procedural history of this case needs brief mention. After the Federal Court of Appeal held in favour of the plaintiff, the defendant appealed to the Supreme Court.

Four broad judicial perspectives emerged in this case. Of the nine judges, three favoured allowing the appeal on both the grounds raised by the defendant. Bastarache, Le Bel and Charron JJ. were of the view that mere incidental presence of the copyrighted works on the wrappers of the chocolate bars did not bring the chocolate bars within the protections offered by the Copyright Act. In their view:

“Section 27(2) of the Act is meant to prohibit secondary infringement resulting from the wrongful appropriation of the gains of another’s skill and judgment by way of the acts enumerated in paras. (a) to (c).  Conversely, other economic interests — although they may seem to be closely associated with the interests legitimately protected as emanating from that skill and judgment — are not protected. 

 In particular, if a work of skill and judgment (such as a logo) is attached to some other consumer good (such as a chocolate bar), the economic gains associated with the sale of the consumer good must not be mistakenly viewed as the legitimate economic interests of the copyright holder of the logo that are protected by the law of copyright.

Thus s. 27(2)(e) is meant to protect copyright holders from the unauthorized importation of works which are the result of their skill and judgment.  It is not meant to protect manufacturers from the unauthorized importation of consumer goods on the basis of their having a copyrighted work affixed to their wrapper, this work being merely incidental to their value as consumer goods.”

Based on this reasoning, they accepted the appellant - defendant’s first contention that the importation was not to meet the purposes mentioned in the first three sub-clauses of Section 27(2). On this sole point, they held in favour of the appellant – defendant since an important pre-condition for attracting Section 27(2)(e) was not satisfied.

Three other judges – Rothstein, Binnie and Deschamps JJ. – rejected this contention raised by the appellant. Expressly disagreeing with the view expressed by Bastarache on behalf of himself and the other two judges, Rothstein who penned the judgment for the latter three judges considered Bastarache’s interpretation of Section 27(2)(e) as one loaded with policy considerations that compel unnecessary and unjustified deviation from the statutory wording.

Rothstein notes that the incidental test expounded by Bastarache is statutorily incorporated, and hence applied, in Canada. This is unlike the scenario in Canada where the statute does not provide for a distinction between direct and merely incidental effects.

However, these three judges have also held in favour of the appellant based on his other contention, being that here, the manufacturer had affixed the logos to the wrappers. Had the manufacturer done this in Canada, there would not have been any infringement since the plaintiff was only an exclusive licensee and not an assignee. It is in this context that this Supreme Court decision assumes utmost relevance, since the Court has considered the concept of secondary infringement in detail.

While the analysis of the Court has to be received with the statutory context in mind, the distinction between primary and secondary infringement harped on by Rothstein J. is conceptual and applies across jurisdictions. In their view:

“Section 27(2)(e) stands out as an apparent exception to the rule in CCH that secondary infringement first requires primary infringement because, unlike s. 27(2)(a) to (d), it does not require actual primary infringement.  Instead, it requires only hypothetical primary infringement…..

 Section 27(2)(e) substitutes hypothetical primary infringement for actual primary infringement.  It is possible that the infringing imports may have been lawfully made outside of Canada.  Still, they are deemed to infringe copyright if the importer has imported into Canada works that would have infringed copyright if those works had been made in Canada by the persons who made the works abroad.”

This test of hypothetical primary infringement is not satisfied in this case as the owners of the copyright were only responsible for affixing the copyrighted logos on the wrappers. The plaintiff is only an exclusive licensee who is authorised to distribute the products, and not an assignee with rights vested in the copyright in the Canadian territory so as to contend none other than the plaintiff could legally affix such copies in Canada.

Factually, the license agreements did provide that the parent companies who owned the copyright could not reproduce the copyrighted works in Canada. However, Rothstein J. reasoned that this provision only attracted a liability to the parent companies for breach of contract and not for infringement in the event of them actually reproducing the logos. In such circumstances, the Court held that the second contention of the defendant, which again went to the root of the matter, was indeed a valid one.

Fish J. agrees with Rothstein J. but fears that the view taken by him on the use of copyright to stop any kind of parallel importation would result in a scenario where copyright law, meant for a very specific purpose, would far exceed that purpose and end up beingan instrument of trade control in a manner not contemplated by the statute.

The dissenting opinion by McLachlin C.J. and Abella J. penned by the latter rejects both the contentions of the defendant. On the first contention, they agree with the reasoning adopted by Rothstein J. On the second issue, they disagree with Rothstein J. on the ground that an exclusive licensee is one authorised to do any act that is subject to copyright to the exclusion of all others including the copyright owner.

Since the licensing agreement restricts the owners of the copyright from reproducing the logos in Canada, these dissenting judges take the view that a suit initiated by the plaintiff for secondary infringement can be maintained even against the copyright owners to the extent they overstep the boundaries of the licensing agreement. This is a rather broad view of the concept of infringement.

To sum up, this is a classic case where different policy and legal considerations have led to varied results, all of which are to some extent correct. Whether the ultimate outcome of each of these views is correct or not, none can deny that adjudication should at the end of the day be as nuanced a process as seen from this case. This can only arise in a system where judges really apply their independent minds to the case at hand.

Friday, January 7, 2011

Weekend Videos: Harvard Business Publishing

For those interested in spending their weekend watching a few insightful videos on innovation, we have provided YouTube links (See right under the blog title) to quite a few good ones from Harvard Business Publishing.

Do I hear voices saying “Harvard Business Publishing Videos on the weekend?? Get a Life!” ? 

No Primary Infringement, No Secondary Infringement : An Interesting Canadian Case – Part I


In matters of copyright infringement, a finding of secondary infringement does not happen too often.

A. Section 51(a)(ii), which treats as infringement, the profitable permitting of any place for the purpose of communication of the work to the public where such communication itself constitutes an infringement of the copyright in the work, and

B. Section 51(b), which treats as infringement, the selling, renting, distribution, exhibition or importation of infringing copies, are the instances in Indian law when secondary infringement is frowned upon.

To my knowledge, very few decisions by Indian courts have made use of these provisions or explained them from a conceptual point of view. Different matter that there may have been very few opportunities so far to delve into this at all! At the end of the day, Courts of law work within a factual setting.

United States Supreme Court has rendered two path-breaking judgments on secondary infringement, one in 80s and the other 20 years later, in 2005. In Sony Corp. v. Universal City Studios, 464 U.S. 417 (1984), popularly known as the Betamax case, the US Supreme Court held that the manufacturers of home video recording devices such as Betamax would not be liable to copyright owners for secondary infringement since the technology was capable of substantially non-infringing and legitimate purposes.

The business of supplying such devices could therefore not be stifled simply because the equipment was used by some individuals to make unauthorized reproductions of copyrighted works. The 2005 decision in MGM Studios, Inc. v. Grokster, Ltd., 545 U.S. 913 (2005) re-examined the principles laid down in the ’84 decision and came to a finding of contributory infringement on the facts involved therein. This case called into question the liability of websites that facilitated peer-to-peer (P2P) file-sharing, a mode commonly used to share infringing copies.

Re-formulating the test for copyright infringement, the US Supreme Court held that ‘one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties’.

Apart from some of these celebrated instances, cases of secondary infringement with prescient expressions of law are few and far between. It is at this juncture that we came to know of a Canadian decision on this issue.

A Perspective from Canada
The DemandingMistress now examines a significant verdict of the Canadian Supreme Court on the issue of secondary liability, in Euro Excellence Inc. v. Kraft Canada Inc., available here. The facts in brief:

Kraft Canada Inc., the plaintiff in the initial action, was the exclusive licensee for distribution of chocolate brands such as Toblerone and Côte d’Or, which were manufactured by Belgian and Swiss companies. The license was exclusively for the territory of Canada. Euro-Excellence Inc., the prior licensee for these products in Canada and the defendant in the initial action, continued to import these products to Canada and distribute the same even after its license with the manufacturer had expired.

This was resisted by the plaintiff who alleged secondary infringement under Section 27(2)(e) of the Canadian Copyright Act. This provision was relied on precisely due to the copyright registration obtained in Canada by the manufacturers for the Toblerone and Côte d’Or logos in the category of artistic works. As per this provision, importing the copy of a work into Canada would infringe the copyright in that work, provided the person who made the copy would have been liable for infringement had such copy been made in Canada.

The basic purpose of this Section appears to be preventing an infringer from getting over his infringement by committing such infringement outside the territorial limits of Canada and then importing the infringing copy to Canada. There is also another limitation contained in Section 27(2)(e) – the importation of the copy has to be for any of the purposes mentioned in the earlier sub-clauses.

The purposes stated are (a) sell or rent out the infringing copies, (b) distribute the infringing copies to such an extent as to affect prejudicially the owner of the copyright, and (c) by way of trade distribute, expose or offer for sale or rental, or exhibit in public, the infringing copies.

The defendant’s contentions were two-fold: (i) the importation of the chocolates was not for the purpose of selling or distributing the logos, but only to sell the actual chocolates; and (ii) the logos were reproduced by the manufacturer himself on the packets sold in territories outside Canada, and if the manufacturer had done the same in Canada, he would not be liable. So, there was no primary act of infringement that would arise at all in this case, since the defendant had never personally made the copies of the logo. He had only imported them into Canada.

There were multiple responses from the Supreme Court and my next post will discuss the verdict.

Thursday, January 6, 2011

Snippets: Law Minister Moots ‘National Litigation Policy’

30 million/3 crore- This is the number of cases pending before Indian Courts, with a few cases languishing for close to a decade and a half. Is there a solution in sight? Probably (Probably roughly translates to “Sambhaavna” in Hindi, which is THE WORD that the Indian Railways and other Indian Govt. Departments swear by...)

The Union Law Minister, Mr.Veerappa Moily, has mooted the idea of a ‘comprehensive National Litigation Policy’ which envisages the restriction of the period of litigation to 3 years (Where are the Judges to dispose these cases? New ‘Benches’ have been constituted, but quite a few ‘Benches’ remain vacant or atleast sparsely occupied...)

One of the objectives of the policy is to reduce government litigation, which forms bulk of the pending cases. Also in the offing is the Right to Justice Bill (shouldn’t we first try and pass the Judicial Standards and Accountability Bill, 2010 and the Judges Assets Bill? Because if the faith in the Judiciary takes a beating, which citizen would want to exercise his right to justice?).

Lets be cautiously optimistic about the National Litigation Policy seeing the light of the day in the near future...

Food for thought: Should lawyers be optimistic at all about this policy?! ;-) 

(Image Source: www.cartoonstock.com)

Wednesday, January 5, 2011

Snippets: Kraft Foods Inc. Sues Britannia for Trademark and Copyright Infringement

In what promises to be a high-stakes dispute, US-based packaged  foods manufacturer, Kraft Foods Inc, has sued one of India’s most well-known packaged foods manufacturer, Britannia Industries, for copyright and trademark infringement.

According to the Economic Times, Kraft Foods has alleged that Britannia’s latest offering, 'Treat-O' biscuits, infringe Kraft’s trademark and copyright in its Oreo Cookies. Kraft has sought injunction to prevent Britannia from selling any product which incorporates “any distinctive element” of Oreo cookies.

ET reports that Kraft’s specific allegations are that Britannia’s Treat-O biscuits use the same trade dress as Oreo cookies. The trade dress here is the design etchings on Oreo biscuits, such as florets and inner rings. Also, apparently the ‘O’ in Treat-O is allegedly inspired from the ‘O’ in the Oreo.

Any further updates on the developments in the suit are welcome! We will keep our readers posted on the case.

I thank Rohan Coutinho for the scoop!

How Obvious is Obviousness?

I was asked by a very close friend of mine to point out (an impromptu viva voce of sorts) the primary difference between Section 25(1)(e) and Section 64(1)(f) of the Patents Act.

Section 25(1) of the Act relates to pre-grant opposition proceedings and Section 64 relates to revocation proceedings. The relevant portions of the provisions are reproduced thus:

Section 25. Opposition to the Patent:
(1) Where an application for a patent has been published but a patent has not been granted, any person may, in writing, represent by way of opposition to the Controller against the grant of patent on the ground-

(e) that the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step, having regard to the matter published as mentioned in clause (b) or having regard to what : was used in India before the priority date of the applicant's claim

Section 64. Revocation of the Patent:
(1)Subject to the provisions contained in this Act, a patent, whether granted before or after the commencement of this Act, may, 1[be revoked on a petition of any person interested or of the Central Government by the Appellate Board or on a counterclaim in a suit for infringement of the patent by the High Court] on any of the following grounds, that is to say—

(f) that 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;

Notice the difference between “is obvious AND CLEARLY does not involve any inventive step” in Section 25(1)(e), and “is obvious OR does not involve any inventive step” in Section 64(1)(f).

By using “logical operators” such as “and”/”or” between “obvious” and “inventive step”, is the Act saying that obviousness is not the same as lack of inventive step? Why not take a look at the definition of an “inventive step” under Section 2(ja) of the Act?

"inventive step" means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art

So inventive step = (feature involving technical advance over prior art OR economic significance OR both) PLUS non-obviousness

Stated otherwise, for a feature to qualify as an inventive step, it must constitute non-obvious technical advance OR non-obvious economic significance OR, non-obvious technical advance and economic significance.

If non-obviousness is so integral a condition for a feature to qualify as an “inventive step”, why do Sections 25(1)(e) and 64(1)(f) separate obviousness from lack of inventive step using “and”/”or”?

There are two ways of interpreting the definition of "inventive step", and consequently two ways of understanding its import on Sections 25(1)(e) and 64(1)(f):

First Interpretation
An inventive step could be a feature which constitutes a technical advancement over prior art, or has economic significance, regardless of it being non-obvious or otherwise. In a way, this means that even an obvious inventive step is an “inventive step” merely because it represents technical advancement or has economic significance.

Simply put, it appears to allude to novelty of the inventive step, regardless of its ingenuity.

The consequence of this is that lack of non-obviousness does not translate to lack of inventive step, it merely translates to lack of a non-obvious inventive step. If this interpretation of the definition of “inventive step” were to be accepted, the effect on construction of Sections 25(1)(e) and 64(1)(f) is as follows:

A. Under Section 25(1)(e), in order for the Controller to reject the patent application and accept the pre-grant opponent’s contention, the patent application must suffer from lack of an inventive step AND obviousness. In other words, the Controller must satisfy himself that the application is defective on both grounds.

B. Under Section 64(1)(f), the IPAB or the High Court may revoke the patent EITHER for lack of an inventive step OR for obviousness i.e. presence of one of these defects is sufficient reason to revoke the patent.

This line of argument appears to make sense. However, the hurdle to accepting this in toto is the absence of a comma separating “technical advance as compared to the existing knowledge or having economic significance or both” and “and that makes the invention not obvious to a person skilled in the art”.

 Let’s see if the second line of interpretation takes us to another possible logical conclusion.

Second Interpretation
In the absence of a comma separating “technical advance as compared to the existing knowledge or having economic significance or both” and “and that makes the invention not obvious to a person skilled in the art”, the construction that one could come to is, that non-obviousness is a condition precedent for an “inventive step” to be treated as one, mere novelty will not suffice.

Put simply, there is nothing inventive about a feature which is obvious. And since there is nothing inventive about an obvious feature, the invention too is no "invention" since it is obvious (reason? "invention" means a new product or process involving an inventive step...Section 2(j))

If this is how the definition of “inventive step” is to be construed, then the use of “AND”/ “OR” in Sections 25(1)(e) and 64(1)(f) do not materially differ. What this means is  “And” and “or” mean the same thing in Sections 25(1)(e) and 64(1)(f).

(Again) if this is the case, what is the purpose of using “CLEARLY does not involve any inventive step” in Section 25(1)(e)? The use of “clearly” could mean that even if the Controller finds the invention obvious, he has to be absolutely convinced of the absence of an inventive step before he rejects the patent application.

This practically translates to a “clearly reasoned order” by the Controller if he arrives at a finding which is adverse to the patent applicant.

Fine, this too makes some sense. But the irony is, under this interpretation, the standard of rigour to be followed by the Controller under Section 25(1)(e) would be higher and much more stringent than the standard to be followed by the Court or the IPAB in a revocation proceeding under Section 64(1)(f) (!!!)

Is this a conundrum worth thinking about, or is it mere futile semantic jugglery by a “blackcoat”?

(Image Source: www.cartoonstock.com) 

Tuesday, January 4, 2011

Announcements: New Feature on the Blog

Robert Oppenheimer, Albert Einstein and Werner Von Braun- What’s common to all of them, besides the fact that they were world-renowned scientists (and all of them had a German connection)? Their videos now form part of the blog’s new feature!

I realized that reading my posts can at times be a soporific exercise, so I decided to offer our readers something more interesting to look forward to, each time they visit the blog. Hence, the new feature on the blog- YouTube Videos on innovation, technology, management and the law (Please see on the top of the blog page, right below the title of the blog).

Readers can now watch the videos on the blog page itself. We’ll keep changing the videos from time to time; for now, we have provided videos of Robert Oppenheimer, Albert Einstein and Werner Von Braun (with Von Braun being one of my childhood idols after A.P.J. Abdul Kalam)

We hope our readers like this feature. Suggestions on videos are welcome!

Monday, January 3, 2011

Guest Post: Patenting ‘Life forms’ under the Patents Act, 1970- Patent Unconstitutionality? - II

This is a continuation from Aditya Arun Kutty's guest post.
Use of the term ‘Variety’
The use of the word ‘variety’ in s. 3(j) is further unreasonable and leads to discrimination between those who are breeders of plant variety and those breeders of animal variety. On one hand, breeders of plant variety are entitled to protection under ‘The Protection of Plant Varieties and Farmers’ Rights Act 2001 (PVRFR), and on the other, breeders of animal variety not only succumb to Section 3(j), they are left in the lurch since there is no separate legislation to protect their interests.

Furthermore, what constitutes ‘variety’ is also unclear as the dictionary meaning fails to identify what can be patented by virtue of its general nature and the Plant Varieties Act defines ‘variety’ only in the context of plant variety.

Also, the phrase ‘animal varieties’ was interpreted narrowly by the European Patent Office to limit the phrase to a variety and as not extending to animals per se. However 3(j) will not permit such an interpretation as it includes ‘animals in whole or any part thereof’.

Lack of a Clear definition
The EPO defines essentially biological process as consisting of entirely natural phenomena such as crossing or selection. Hence, EPO allows patenting of genetically modified plants or animals since genetic modification ensures that what is patented is not purely a natural phenomenon. 

Li Westerlund in his book on Biotech Patents,[i] states aspects of a biological process, which in practice, could lead to problems while deciphering its patentability quotient:
(i)                  Purely biological or essentially biological steps or a mixture of those steps, in a process.
(ii)                Purely biological/essentially biological steps but put together in a manner that levels the process at the higher technical standard.
(iii)               Biological/essentially biological steps plus a technical step in a process.[ii]

These steps clearly colour the fact that in the absence of a specific test to delineate patent-worthy inventions from the rest, the patent office to date remains ill-equipped to decide.

Article 14 strikes at arbitrariness because an action that is arbitrary must necessarily involve negation of equality. In this regard by not defining ‘seed’, ‘species’, ‘essentially biological process’ s. 3(j) leaves a tremendous scope for arbitrariness.

The only other legislative definition of a ‘seed’ would be that under the Plant Varieties Act, i.e. ‘a type of living embryo or propagule capable of regeneration and giving rise to a plant which is true to such type’. (s. 2(x))

In a case where seed is made by human interventions, (falling within this definition)its patentability would depend on the absolute discretion of the patent office.

Integration of words like patents, animals, essentially biologically process, without qualifying them with certain meaning, could well-nigh lead to denial of a patent (which inadvertently goes against the balancing objective of TRIPS under article 7) and this when provisions in foreign regimes such as the UK Patent Act specially accommodate for biotechnological inventions.

The situation in India as far as micro-organism patenting took a turn for the positive post the Dimminaco judgment of the Calcutta High Court (Process for preparation of alive vaccine for Bursitis). Subsequently, under the 2002 amendment to the Patents Act, only a micro-organism per se was unpatentable, qualifying the transgenic as patentable subject matter.

 Judicial Decisions/ Directives to seek Inspiration from

In the U.S. Animal Legal Defense Fund v. Quigg, the court held that an organism, “given a new form, quality, properties or combination not present in the original article existing in nature in accordance with the existing law”, could be patented.

Moreover, in the Harvard Oncomouse case, the first patent on a “non-naturally occurring non-human multicellular living organism”, patent was granted to a genetically engineered mouse.

In Ex Parte Allen, the patent examiner’s rejection of claims for a genetically engineered life-form was overruled. The board held that an oyster genetically engineered to be edible year round, constituted patentable subject matter. It was also opined that any multi-cellular organism may be patented by the inventor provided it:
A. it is created for the first time,
B. it is not a naturally occurring ,
C. is not a human being,
D. it is an item of manufacture or composition of matter, and
E. it meets all of the other conditions of patentability.

The EPC directive on legal protection of biological inventions 98/44/EC directly addresses patenting of life-forms. Under the directive, plants or animals may be patentable, if the technical feasibility of the invention is not technically confined to a single plant or animal variety. (This altered the EPC’s prior wording which explicitly excluded plant and animal varieties from patentability)

Article 6 of the Directive states that the human body, at the various stages of its formation (including the embryo and sequences or partial sequences of genes), is not patentable.

That said, it goes on to envisage that in case of an element of a human body, which has been removed through a technical process, can be patented even if the structure of the element is identical to that of a natural element.

In conclusion, I believe that the legislature needs to take a definitive stance prior to any litigation that may arise. Although common law will always factor equity into its analysis of legal issues, a statutory reference would serve to clarify the intention of the legislature. It would also give Courts the flexibility, precision and independence from subjective bias, to adjudicate an area of law in which the subject-matter is said to be ‘unforeseeable’.

Until and unless the law clarifies these terms, as was held in Sheo Nandan Parwan v State of Bihar- ‘the law will always frown on uncanalised and unfettered discretion conferred on any instrumentality of state.’


[i] Biotech Patents: Equivalency And Exclusions Under European And U. S. Patent Law, Kluwer Law International (August 2002)
[ii] Ibid.

Guest Post: Patenting "Life Forms" under Indian Patents Act, 1970- Patent Unconstitutionality?- I

We had promised to “generalize” IP by connecting it to traditional areas of the law such as Constitutional law. Keeping with that promise, we bring forth a guest post on (un)Constitutionality of Section 3(j) of the Patents Act, by Aditya Arun Kutty, a bright final year law student of Hidayatullah National Law University, Raipur.

Aditya is a self-confessed IP enthusiast, who has taken part in several IP moots and has also written on ISP liability and trademarks. In this post and the next, Aditya argues that Section 3(j) of the Patents Act may come under fire for being unconstitutional absent specific guidelines to reject applications which purportedly claim unpatentable subject-matter. Without further ado, here’s Aditya’s post:

The Restrictive Denotation of ‘Life form’ inventions under the Patents Act, 1970: Prospective Room for challenging the constitutionality of s. 3(j)?- Aditya Arun Kutty

It’s interesting to learn how biotechnology has empowered mankind to craft organisms. The introduction of new organisms into our environment has irrevocably changed the biological landscape. The patenting of living creatures has thus far proved to be a part of this conundrum; the debate has ranged from wholly disregarding such creatures as being patentable, to demarcating the line after grant, whereby it would be possible to limit such protective rights.

Patents, as affirmed, should be granted only to human inventions, not discoveries. As known, only inventions that meet the statutory requirements of being new, useful, and non-obvious, can be patented. Inventions or discoveries, such as naturally occurring organisms, laws of nature, natural or physical phenomena and abstract ideas, cannot be patented. 

The general prejudice against life-form patenting is that- existing living organisms - plants and animals as well as their genes - are no-one's invention and should therefore never be patented and put under private control.

Effectively the prohibition on patentability of plants and animals rests on three philosophical foundations[i]:
Firstly, patents on plants and animals would allow humans to hold exclusive rights on other living organisms, an arrangement that seemed (and continues to seem) immoral to many.[ii]

Secondly, it is argued that granting such patents would unjustly enrich those who were simply the first to apply for a patent on a naturally occurring organism.[iii]

Thirdly, some have invoke a Lockean philosophy of labor and just deserts in contending that live-organism patents were inappropriate because they did not require the patent holders to mix their labor with the naturally occurring item.[iv]

These reasons reflect what is known as the ‘product of nature’ theory, this was of-course explained in a more detailed manner in the Kalo case (Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948) where the court’s application of this theory led it to determine that Kalo had failed to take an inventive step when it mixed bacteria to produce an improved fertilizer.

Gradually now, a showing of human intervention is required to file for a patent in the first part of the test. This basic requirement prevents the direct appropriation of naturally occurring organisms. The applicant's use will have some bearing on the quantifiable calculations; the evolutionary biology test does not assume that a biotechnologically altered organism is inherently man-made. It goes a step further to calculate and examine the probability of the organism's natural development as part of the first prong of the proposed test.

Let’s now take a look at section 3(j) of the Indian Patents Act:

Plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals. 

Although, according to article 27 of the TRIPS, a member state may exclude from patentability plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and micro-biological processes. Thus, with an ordre public exclusion having been carved out, the Indian legislation may very well be TRIPS compliant.

But the fact remains that if a law may be enacted by the parliament to give effect to an international treaty (Article 253), the same maybe struck down by the Supreme Court or High Courts of India as unconstitutional, if it violates any of the fundamental rights of the citizens.

Which brings us to the point that there a few plausible grounds whereby section 3(j) may not be justified or in litigation terms- may become prey to invoke the question on constitutionality.

Firstly, the usage of words ‘plants and animals in whole’, incorporates a blanket ban on the patentability of all living organisms, without even considering engineered animals.

Secondly, the silence of the Act on the patentability of the living forms coupled with the usage of wide terms such as ‘plant and animal’ leads to ambiguity as to the patentability of an organism which is a result of human intervention, leading to arbitrary powers in the hands of the Indian Patent Office to grant or deny a patent.

For instance, the Oxford dictionary meaning of the terms would suggest that the ordinary meaning of “plant” is a “living organism other than an animal, typically fixed to a substrate, able to subsist wholly on inorganic substances, and moving chiefly by growth” and “a living organism (such as a tree, grass or fern) that absorbs water and inorganic substances through its roots and makes nutrients in its leaves by photosynthesis.”

Finally, the term “animal” refers to a “living organism having sensation and voluntary motion, without rigid cell walls, and dependent on organic substances for food.” In addition, “a living organism which feeds on organic matter, has specialized sense organs and nervous system, and is able to move about and to respond rapidly to stimuli.”

It is clear from these definitions, that even if there is an organism which is a result of human intervention it can fall within the definition of ‘animals’, therefore disentitling it from patent protection. Thus, as of today, a product ‘X’ which is humanly engineered, would fall within the teeth of Section 3(j), no thanks to absence of specific guidelines and delineated definitions of terms such as ‘plants’ and ‘animals’.

[CONTINUED IN THE NEXT POST]
[i] M.T. Iwasaka Ryan, Chakrabarty to Chimeras: The growing need for evolutionary biology in Patent law 109 Yale L.J. 1505.
[ii] Tom Regan, The Case for Animal Rights, 1983; Peter Singer, Animal Liberation (2nd edn, 1990)
[iii] O'Reilly, 56 U.S. (15 How.) 132-33
[iv] C.B. Macpherson (ed), Second Treatise of Government (Hackett Publ'g. Co. 1980) 8-30, ‘For John Locke's original discussion’