SONY in the name of third party allowed trade mark registration for ladies undergarment

Sony Corporation seems to be having a nightmare of sorts in protecting its brand SONY from third person violation. If the fact that SONY for “nail polishes” was not held to violate the rights of “SONY” of Sony Electronics (see AIR 1985 Bombay 327) was used as a precedent by another Indian trader to defend the mark SONY for “frames for spectacle and goggles” from Sony Corporation (see 1989 IPLR 92). In both these cases, Sony Corporation failed to prove that their mark SONY was well known and therefore should be protected across classes.

Both the above cited cases happened in 1980s and Sony Corporation must be thinking that now with passage of new Indian Trade Marks Act, 1999 on September 15, 2003, which gave statutory recognition to well known trade marks, they can safely battle out any third parties violating their rights.

This was not to be. In the case of AB Textiles v. Sony Corporation 2007 (35) PTC 288, Sony Corporation could not defend the use of the trade mark SONY by AB Textiles for ladies undergarment in Class 25 despite having prior, valid and subsisting registration for the mark SONY in Class 25. The Registrar while deciding the case against Sony Corporation relied upon the following factors:

(a) The Opponents(Sony Corporation) have not adduced any evidence in support of their use in class 25 despite having registration in the same class.

(b) The Opponents are mainly using the mar SONY for electronic goods;

(c) AB Textiles have been using the mark SONY for ladies undergarment since 1998 continuously and extensively in the States of Assam and West Bengal;

(d) There has bee not a single instance of confusion and deception that has been brought to the notice of the Tribunal by the opponents.

(e) The above-stated two cases serve as precedents and instances where identical marks have been granted registration. The Registrar also relied upon where BRIDGESTONE was allowed registration in relation to “bicycle parts other tyres an tubes” against opposition by the registered proprietors of the same mark for heavy vehicles, tyres and tubes (see FAO (T& M) 156-D/1963 (Delhi) p. 154);

(f) SONY is not an invented word, but is a “feminine name” as well as a surname in India.

The important lesson one can learn from this case is that if any company, foreign or Indian, looking to protect their mark across classes based upon their well known status, should first of all start collecting evidence which will help them defend their case. It is easier said then done, but it also better then getting an adverse decision.

Patent licensing by co-owners in India

Before proceeding to stating anything regarding patent licenses in India, it is important to note that the though the Indian Patents Act speaks about licenses for “granted” patents and is silent about patents that have not yet been granted but are being assigned or licensed or undergoing some change ion ownership, it is to harmoniously and I believe correctly to be interpreted from Section 11A (7) that applicants shall have like privileges and rights in a patent, if published, as if a patent has been granted. The only time when a “patent, published, but yet to be granted” will not function as though the patent is granted is in the case of suit for infringement. Therefore, it would be reasonable to presume that for the purpose of licenses, mortgages etc, the Act treats “patent, published, but yet to be granted” as though the patent is granted. Based upon this, we shall proceed further as below.

For a patent to be licensed in India, the prerequisite is that the license agreement should be:

(a) in writing and duly executed as required under Section 68 of the Indian Patents Act (hereafter “the Act”); and

(b) registered as required under Section 69 of the Act since a license agreement falls within the ambit of “documents that must be registered with the Indian Patent Office” as prescribed by section 69 of the Act.

If there are co-owners of a patent then Section 50(1) of the Act provides that each of the co-owners equal undivided share in the patent unless there is an agreement to contrary.

Section 50 (2) of the Act states that each of the co-owners is entitled by “himself or his agents” to the rights in the patent for his own benefit without accounting to other co-owners. Both Sections 50(1) and 50 () come with the rider on “an agreement to the contrary in force” or/ and Section 51 of the Act does not apply.

Section 50(3) of the Act states that to license a patent by one of the co-owners in India there is a requirement that co-owner seeking to give license should have the consent of the second co-owners of the patents. Here again the Act has tempered this Section by adding a proviso of “an agreement to the contrary in force” or/ and Section 51 of the Act.

Thus, only instances envisaged under the Patents Act where permission is not required from the second co-owner by the first co-owner are:

(a) if there is an agreement between the co-owners which states that both the co-owners can act independently.

(b) Section 51 of the Act, where the Controller of Patents gives directions to the second co-owners.

In the second instance, the Controller is vested with powers under Section 51 to issue directions to the second co-owner about the licensing of the patent. This direction could be in form of a simple question such as if the second party has any objection against the licensing of the patent by the first co-owner. If the second co-owner fails to execute any instrument or do any other thing required by the Controller within fourteen days of such a request, the Controller can give directions to “any” person to execute the instrument or do that thing in the name and absence of the person in default.

Sub section 3 of Section 51 of the Act provides that an opportunity to be heard would be provided to the person in default.

Therefore, in situations where it happens that there is no agreement to the contrary in force and one of the co-owners does not give consent to the first co-owner for licensing, then the situation becomes very tricky. In such cases, proviso to Section 69 (3)of the Act states that the Controller would refuse to any action until the rights of the conflicting parties have been resolved by a competent court.

Therefore, if one of eth c-owners is looking to licence the patent, then as the first step, the co-owner should ensure that there is a clear agreement with the other co-owner regarding commercialisation of the patent. The agreement could be of such a nature that it gives both eth parties equal right to exploit the patent or divide the territories or may be limit the amount of commercialisation by other party.

The bottom line is that the co-owners require to have an agreement in force for commercialisation to avoid getting into nitty-gritties of interpretation of Sections and the discretion of the Controller.

Well known trade mark cases in India

I am just trying to compile all the cases that speak about well known trade marks and trans-border reputation I am just commencing the process and will give it shape over a period of time


N.R. Dongre v. Whirlpool Corporation reported in 1996 (16) PTC 583

Milmet Oftho Industries and Ors. Vs. Allergan Inc. 2004(28)PTC585(SC).

Austin Nichols & Co. & Anr V. Arvind Behl & Anr 2006 (32) PTC 133(Del) where the High Court of Delhi restrained the Defendants from using the trade mark “BLENDERS PRIDE” for “alcoholic beverages including whisky or any other allied goods thereof” and it was held that the Defendants, merely by virtue of their obtaining registration in India prior to the registration by the Plaintiff do not acquire “first past the post” rights and such registration would not hold good.

Mercedes Benz case

WIPO case No. D2000-0049: tata wins domain name case. http://cyberlaws.net/cyberindia/tata.htm


1
Manu Kosuri & Ors
(Re: various domain names)
159 of 1999
Permanent injunction granted against the defendants from using the domain names jrdtata.com, ratantata.com, tatahoneywell.com, tatayodogawa.com, tatateleservices.com, tatassl.com, tatapowerco.com, tatahydro.com, tatawestside.com, tatatimken.com or using any mark which comprises Tata or any other identical or deceptively similar mark.

Permanent injunction granted on March 9, 2001.


2
Windals Auto & Another
(tatasons.com)
2615 of 1999
Defendants agreed to transfer the domain name to Tata Sons Limited; entered into a settlement agreement. The suit has been decreed in such terms.

Final order passed on February 8, 2002.


3
Domain
(tatapower.com)


2001-0627
Complaint withdrawn as the registrant voluntarily transferred the domain name to the complainant, Tata Sons, in August 2001.


4
Shahid Tanvir
(tata.ws)
2001-0002
Complaint withdrawn as, subsequent to the filing of the complaint, the registrant gave up the domain name. The domain name was then registered in the name of Tata Sons Limited.


5
Hasmukh Solanki
(tataamex.com, tata-amex.com and amextata.com)
2001-0974
WIPO ordered transfer of domain names in favour of Tata Sons Limited.

Final order passed on September 25, 2001.

Tata Sons Limited versus Chitra Pendse.tata.org

electronic filing of patent and trade mark applications

The Indian Intellectual Property Office (IPO) has commenced e-filings of patent and trade mark applications. The IPO organised a training session on August 20, 2007 to teach patent and trade mark attorneys and agents of using the e-filing method. Some of the salient points regarding e-filing are mentioned herein below:

1. To operate the e-filing system, the agent/attorney is required to have a digital signature. The digital signature is a requirement under the Information Technology Act, 2000.

2. The digital signature is allocated after a physical verification of the applicant for digital signature;

3. A single digital signature works for e-filing of both patent and trade mark applications i.e. separate signatures are not required;

4. The digital signature can be obtained for a fee of Rs. 2500/-. This signature is valid for one year. In case digital signature is required for two years, then the fees is Rs. 4000/-

5. Once the digital signature obtained, the agent/attorney/applicant can allocate as many user ids as they desire;

6. At the moment the payment gateway is through State Bank of India (SBI) i.e. an applicant/agent/attorneys requires to have a SBI account (current/saving) to file patent and trade mark applications.

7. There is a facility for fee payments by credit cards as well, but it is not yet operational.

8. If the applicant is a foreign national and the applicant is filing the application in India electronically, then it is a mandatory requirement that the applicant should have (a) a digital signature; (b) SBI Account and (c) address for service in India.

9. For foreign applicants desirous of obtaining the digital signature, an endorsement and clearance from applicant’s embassy in India is required.;

10. At present only the patent Form 1 and the complete specification can be filed electronically. There is no provision for filing for amendments and assignments at the moment. The IPO has advised that the changes in the software will happen gradually and at the moment apart from filing the application electronically, the applicants/agents/attorneys are required to physically file the application as well.

11. For trade mark electronic filings, the application can be filed electronically and no hard copy requires to follow the electronic filing as in the case of patent electronic filing at present.

Novartis patent matter: where were we looking?

There is a really nice article in Economic Times dated August 13, 2007. It is something which is so true and most of us have lost sight of in the Novartis Glivec matter. It is about healthcare and infrastructure that is in woeful condition in India. While the activists have been rallying about the fact that patents are bad for the healthcare and patients in India, nobody has ever made a hue and cry about the miserable condition of hospitals and healthcare in India.

The really good part about the article is the facts and statistics which speak volumes about the state of affairs in India. The article clearly brings out the fact that for the Indian poor, intellectual property is not the issue. The real issue is the healthcare infrastructure. Some startling facts, I have culled out and listed below:

(a) About 60% of Indian do not have access to basic, off patent (generic) medicines;

(b) Despite pumping cheap generic AIDS drugs for years, only 5.5% of India’s AIDS sufferer were receiving any drugs by end of 2006

(c) According to a 2005 report by Transparency International, the health system is the most corrupt service sector in India. The transport network is so bad that rural people struggle to get to a clinic, even if one exists within 200 kms of their home

(d) An estimated 400, 000 Indian children under five die each year from preventable diarrhea.

(e) Children are going without routine vaccinations

(f) Simple anti-infectives are out of reach of the majority of rural poor

The authors of the column are A Van Gelder and P Steven, analysts at International Policy Network, a think-tank based in London. I do not know where they may have got the statistics and I do not vouch for the accuracy either. What I can definitely vouch for is that being an Indian myself, I know without my own facts and figures that they are not way off the mark.

Instead of looking at intellectual property as an enemy, people should start viewing it in the light of as an essential economic tool. A good IP regime is beneficial for everyone. It is beneficial for the economic growth of the country since intellectual property protection is amongst the first things that foreign companies look at before investing. On the other hand for the public it is good since intellectual properties such as patents act as guarantees for good quality and effective drugs. It is not an unknown fact that there is a huge market in India for copy drugs that do not international standards and untested drugs.

Novartis dealt a body blow by Swiss government

The much awaited judgment in the Novartis’s case of challenging the constitutional validity of Section 3(d) of the Indian Patents Act, 1970 was quite an anti-climax. There were hopes that the Chennai High Court would render a landmark and ground breaking judgment. This was more of a hype and several persons had already predicted that Chennai High Court will not be adjudicating on the constitutionality of Section 3(d) [for reference see Shanmnad’s comments on SPICY IP titled Monday, August 06, 2007 Novartis Loses At The High Court: Focus Now Shifts To Ipab http://spicyipindia.blogspot.com/]

If the facts and circumstance are taken into account, one would realise that the Court has rendered the correct judgement. There appeared to be no way out for the Court and leave alone passing the buck, the correct forum is WTO Dispute Resolution, not Courts in India.

For Novartis the recourse was therefore WTO to challenge the patent regime especially Section 3(d). This recourse has been dealt a body blow because of the comments of Doris Leuthard, Swiss Federal Councillor to the Department of Economic Affairs. She has said that, 'The Swiss government never gets involved in any judicial pronouncement of other countries. We accept any case which is settled in India. It is normal litigation in which one party happens to be a company while other is a country'. She has also stated that “We must have a reliable TRIPS system, and the one in India is good enough”. For the full story go to http://www.forbes.com/markets/feeds/afx/2007/08/08/afx3998070.html.

So what does this mean for Novartis? It seems that Novartis has only the recourse of going to the Supreme Court of India challenging the order of Chennai High Court. This shall only mean protraction of the matter with a high probability with Supreme Court up holding the decision of Chennai High Court.

It seems that Novartis should quietly accept this fate accompli and work through Swiss government to change some policies and provisions in the Indian patent law. The reason for this suggestion is that the Swiss minister is in India to set up a joint committee to develop a dialogue on issues of intellectual property. There will also be exchange of information and ideas. May be if Novartis plays its hand right, it could work things in its favour and still extract something from this losing scenario. This might seem far-fetched and a long term suggestion, but I would like to hang on to the axiom “something is better then nothing”

The IPAB matter is still to decided. Mr. Chandrasekhran’s removal from the Board hearing this matter should be confirmed by the court. This is merely a technical issue and the odds are heavily against Novartis for the IPAB to rule in its favour. The fact is heavily against Novartis has been discussed on Duncan Bucknell’s blog (http://duncanbucknell.com/blog/110/). Some excerpts are reproduced below which will help thro light on the Novartis’s weak situation:

“Unfortunately, for Novartis, Ranbaxy and Natco were able to prove that the increased efficacy is not present since Novartis themselves have stated that free base form and the salt form compared with β-crystal form of imatinib mesylate and the difference in bioavailability is only 30 per cent and also the difference in bioavailability may be due to the difference in their solubility in water.

Unfortunately again for Novartis they were not able to show any improvement in the efficacy of the β-crystal form over the known substances rather was proved that the base can be used equally in the treatment of diseases or in the preparation of pharmacological agents wherever the β-crystal is used.

The second and more significant problem that Novartis has run into is that of the imantib mesylate (IM) itself. The opponents (Ranbaxy and Natco) have successfully been able to prove that imatinib mesylate salt inherently existed in the β-crystelline form which is the most stable form of the salt. Even the affidavit of Novartis in the opposition proceedings states that the β-form is thermodynamically more stable. Ranbaxy and Natco were able to show through prior publications and studies done by two reputed government institutions Indian Institute of Chemical Technology, Hyderabad and Indian Institute of Technology, Delhi that the salt exists in the β-crystalline form. These experiments were performed not once but at least ten times and at all times the crystals were found to exist in the β-form. Hence the invention has been compromised/ anticipated before even the application by Novartis was filed.

….the opponents were able to show that " 1993 patent discloses methanesulphonic acid as one of the salt forming groups and also the 1993 patent specification states that the required acid additions salts are obtained in a customary manner. Further, claims 6 to 23 of the 1993 patent claim a pharmaceutically acceptable salt of the base compound. The patent term extension certificate for the 1993 patent issued by the US Patent Office specifically mentions imatinib mesylate (Gleevec R) as the product. All these points clearly prove that imatinib mesylate is already known from the prior art publications and the Opponent has satisfactorily proved that the salt normally exists in the β-form which is the most thermodynamically stable product. Hence I conclude that the Opponent has succeeded in proving that this invention is anticipated by prior publication."

…..the hitch is that Novartis faces an uphill task to prove the following "and" conditions:

1. That the invention is not barred by Section 3(d); and

2. That the compound is novel; and

3. That it is non-obvious; and

4. That Novartis did not disclose that the application was based upon a non-convention country nor did it make any efforts to change this position. This has been viewed as a misleading tactics. Though probably this is the weakest of the four, but still will be required to be proved”

Therefore, it indeed appears to be the end of the road for Novartis in this matter. What are your thoughts on this matter….

Novartis Loses or did the court play monkey??

The High Court has passed an order dismissing the petition. A closer look at the order seems to suggest that the Court has said that the court cannot decide whether the Act is in accordance with TRIPs.

What has the court decided or has the court decided anything?? I cannot say by reading from the few articles that have been released as well as by NDTV article reproduced below, if the court decided upon the constitutionality or did it just pass the buck?

At the moment it appears to be just monkey business and I will keenly look forward to an update and possibly a copy of the order.


Press Trust of India

Monday, August 6, 2007 (Chennai):

The Madras High Court has dismissed a petition filed by Swiss pharmaceutical major Novartis AG relating to the patent right for one of its products.

The plea challenged the constitutional validity of Section 3 (d) of the Patents (amendment) Act 2005 for patenting the beta crystalline form of imatinib mesylate.

Quashing the petition, a division bench comprising Justice R Balasubramanian and Justice Prabha Sridevan held that the court cannot decide whether the Act was in accordance with trade related aspects of intellectual property rights (TRIPS) agreement or not.

The Intellectual Property Appellate Board (IPAB) on July 21 had rejected the plea by Noivartis to exclude a technical member from a bench constituted to hear its appeal against rejection of patent right to beta crystalline form of imatinib mesylate.

Counter affidavit

The firm objected the appointment of S Chandrasekaran on the IPAB bench on the ground that he had 'disabled himself' to hear its appeal against rejection of its patent right, as he had deposed in the counter affidavit filed in the Madras High Court.

Rejecting the objection, the IPAB bench comprising board Chairman M H S Ansari and S Chandrasekaran had noted: "The submissions made by Chandrasekaran have no relevance as they were based on his official capacity as a statutory authority before assuming the post of adjudicator and hence must be eschewed from consideration on the facts of the instant matter."

Originally, the company had filed an appeal and a petition in the Madras High Court.

The appeal challenged rejection of its patent application for beta crystalline form of imatinib mesylate, sold under the brandname Gleevee / Glivec.

Constitutional validity

The petition challenged the constitutional validity of the provisions of the Patents (Amendment) Act 2005, on the basis of which the firm's plea for patent was rejected.

Since there was no IPAB bench, which is the competent authority to hear the appeals against rejection of patent, the company moved to the high court.

During the course of hearing, the Centre notified the constitution of IPAB bench. Following this, a Division Bench of Justice R Balasubramanian and Justice Prabha Sridevan, which was hearing the matter, referred the appeal to the board.

However, the high court had reserved orders on the petition challenging the validity of the provisions of the Patents (Amendment) Act, 2005

NOVARTIS MOVES HIGH COURT TO REMOVE CHANDRASEKHARAN)

There is now a row about Chadrasekharan being part of the IPAB, when it was he who has passed the order against Novartis in the opposition proceeding and is now listening to his own appeal. The IPAB has rejected the claims of Novartis and have allowed Chadrasekhran to be a part of the PAB for Novartis appeal. Novartis has filed a writ with IPAB challenging this situation. This how the situation stands today.

This post is more as a reply to Shamnads post on Spicy IP (NOVARTIS MOVES HIGH COURT TO REMOVE CHANDRASEKHARAN) and I have thought I should post it at IPUN as well.

The way I see things is that the purpose of the two forums, IPAB and High Court, are different. High Court is the correct forum at the moment to handle the question of constitutional validity of Section 3(d). IPAB’s job is to decide upon the technical grounds and nothing to do with constitutionality.

To the extent that Chandrasehekaran should not be a part of the IPAB bench deciding Novartis case is justified. But to say that the matter regarding technicality should be transferred to Madras High Court is not correct. The case may be very important and is required to deal with issues which are sensitive, but to say that High Court is more sensitised to the matter is again not entirely correct. If the case should run its course, then it should run its course in the respective forums i.e. one deciding constitutionality and the other deciding upon the appeals on technical grounds. Let this be trial by fire for the IPAB. If the matter is taken is away from IPAB, the whole purpose of constituting the IPAB is defeated. If High Court is to be end all of all litigation then IPAB should be scrapped. This case may be important in several aspects but I repeat that it should run its course in the respective race courses.

The point which seems to be missed here is that all IPAB (accepted sans Chandrasekharan!) has to do is not allow the appeal simply on technical grounds of Novartis missing the required deadline to file the application in India by claiming priority from a country which was not a convention country without even getting into Section 3(d), obviousness or any other debate. By simply doing this, the IPAB would have rendered the correct decision and the onus would be on High Court to decide upon the constitutionality. The way things are poised, it seems (I may be totally wrong) that Novvartis is less bothered about their application not being allowed and more bothered about Section 3(d) on which the fate of its several applications rests as well its future patent strategies in India.

I am reproducing a portion of the Controller’s order regarding priority and as a third person I see no flaw in it especially since everybody knows that patents are highly time sensitive and the applicants are required to be aware of the this.

“The Opponent said this application was filed in India on 17th July, 1998 as a convention application claiming Swiss priority date of 18th July, 1997 whereas Switzerland was not a convention country on that date. Further, Section 133 did not have and does not have any retrospective effect. The Opponent cited a decision of the High Court of Calcutta in the case of Danieli AC Officine Meccaniche SPA, Italy in support of his argument. In the present case also, Switzerland became convention country only in September, 1998. Hence no priority may be claimed from Swiss application.

The Applicant said that priority date is only a facility provided to the Applicant to avoid anticipation by publication of the invention between priority date and the filing date in India. It is the discretion of the Applicant to claim priority. I agree with the contention of the Opponent that this application wrongly claims priority.”

To sum it up, I believe that IPAB has been provided with an escape route and it should be allowed to use this and smartly pass the matter to High Court in correct fashion which would show that IPAB has done what is to be done without creating a fuss. This I believe also forms a part of running the course. Yes there may be writs and all, but no fingers would be pointed towards IPAB for passing a wrong judgment. I am not defending IPAB, but I am trying to see the logical and correct manner of approaching this unique situation.

Harmonisation of intellectual property and competition law in India

This article is interesting because it talks about harmonising intellectual property rights with competition laws. At present there are certain provisions that cater to intellectual property rights, but to the best of my knowledge, the Competition Act does not talk about balancing intellectual property rights with fair competition especially with regards to mergers and acquisitions.

If this frame work of harmonisation is implemented, then there will be some sticky issues that may arise such as what is controlling the market unfairly or strategically. In fact the sticky issues will most likely to arise in those mergers and acquisitions where the acquisition of intellectual property “appears” to be a lot but yet not lot. We can call this the traditional grey area where all the disputes arise. For the moment Competition Commission of India (CCI) appears to be on the right track and is taking intellectual property seriously.

One thing that does strike me is that in today’s world intellectual property has gained such significance that it can actually control the whole economy. The era of intangibles is here.

MNCs marrying into India Inc face patent test
30 Jul, 2007, 0432 hrs IST,Gireesh Chandra Prasad, TNN, Economic Times

NEW DELHI: MNCs going in for mergers and acquisitions will soon be required to divest some of their patented technologies to a third-party rival if the intellectual property rights (IPRs) of the combined entity undermine fair competition in the market.

While approving big mergers and acquisitions, the competition regulator will ensure the merged entity does not control the entire range of a particular product category through its combined intellectual property wealth. If the merging entities are the only two companies that have proprietary technology for a product category, they may have to agree to divest the knowhow to a third-party rival.

The guidelines on how to balance competition law with IPR, which the Competition Commission of India (CCI) is evolving, aims to protect consumers from the ill effects of big firms gaining further in size and market share. This is particularly true for MNC pharma companies that want to consolidate to resist the storming generics competition.

The move assumes significance as India recently started issuing patents on finished pharmaceutical products. Also, the merger of local arms of global majors would need CCI’s blessings. In the 1990s, Swiss pharma giants Ciba-Geigy and Sandoz - which merged to form Novartis AG - had to agree to such a condition to get the Federal Trade Commission’s nod for the deal. Novartis has been rumoured to be in talks with its rival at home F Hoffmann La Roche for a possible merger that would result in the largest pharma company in the world. Roche had bagged the first pharmaceutical product patent in India.

CCI will also work with the patents office and the government to ensure rigorous competition principles are followed in the grant of patents and, more importantly, their enforcement. It has identified nine areas where patents are globally abused by owners.

Pooling of competing patents by rival companies through cross-licensing, insisting that any improvement in the patented innovation that a licensee makes should be exclusively granted back to the licenser and condition in the licensing agreement that the licensee will not challenge the validity of the patent are some of the possible abuses that the commission wants to check.

Besides pharma and biotech firms, the move has major implications for telecom companies that often fight in courtrooms over IPR issues. The maker of a leading brand, say a computer operating system, not disclosing how rival companies could make their application software, say for Internet browsing, compatible to the market leader’s operating system is another form of abusing IPR rights. Broadening of patent claims to get monopoly for parts of the finished product other than the invention is yet another form of abuse that CCI would target.

“Competition authorities find problems not in IPR per se, but the way it is enforced by some owners. If conditions introduced in the exercise of rights go beyond the protection of IPR and result in throttling competition, then it defeats the purpose of IPR, that is, incentivising innovation,” CCI member and acting chairman Vinod Dhall told ET. The harmonious enforcement of the two legal systems to complement and strengthen each other’s purpose is needed, he said.

“IPR laws are meant to encourage innovation, not stifle it. Abusing IPR rights can defeat its very purpose and, therefore, competition principles should be kept in mind while exercising such rights,” Mr Dhall said.

Indian IP office going electronic!

It seems that the meeting which I described in my posting titled “IPO-an electronic revelation” have culminated into something finally. The article reproduced below appeared in the Economics Times stating that facility for e-filing of patent and trade mark applications are now finally here.

It is good news for the applicants and not so good news for the attorneys since the attorneys would be losing a part of their work i.e. the filing work. In any case, some inside sources (sounds like conspiracy!) say that by the time the systems are up and running, it will be some time. I hope I am proved wrong! In any case this is a good development.

The article is as below:

Patent & trademark get e-filing facility
21 Jul, 2007, 0325 hrs IST, TNN

NEW DELHI: The government has launched a facility for e-filing of patent and trademark applications to speed up the process of securing exclusive rights over a product or trading symbol.

“Applicants can file their patent and trademark applications from anywhere in the world at any time at their convenience through Internet. Payments can also be made through payment gateways of authorised bankers, which would save time and money and hassles involved in visiting offices,” commerce and industry minister Kamal Nath said.

So far, five lakh trademarks have been registered in the country and efforts are afoot to ensure that the backlog is cleared promptly, secretary in the department of industrial policy & promotion, Ajay Dua, said.

Last year, 29,000 patent application were filed in the country, of which 8,000 were approved. Mr Dua said the number of patents in the country increased by over 600% from 1999-2000, when less than 5,000 applications were filed.

The modules for e-filing and online processing have been developed by the National Informatics Centre while the payment gateway is currently being provided by the State Bank of India.

Mr Dua said the government had undertaken a Rs 153-crore programme to modernise infrastructure of intellectual property offices in the country. The fund was used to build four offices in metros.

Singular damages order passed by the Delhi High Court

The Delhi High Court passed an interesting order pertaining to damages on July 13, 2007 in Disney Enterprises, Inc. & Anr. v. Jitendra Aggarwal & Ors.C. S. (OS) No. 175 of 2006 before the High Court of Delhi. The defendants wanted the matter settled by stating that they would not be able to pay Rs. 20, 00, 000 as damages but were willing to have an injunction against them and a token damage of Rs. 50, 000. The facts of this case are not that spicy, but the order of the judge to enforce the damage decree is singular.

The Court while passing the consent decree held that that the defendants were to pay Rs. 50, 000 within one week of passing of the order. Failure to do so would entail the defendant to pay damages of Rs. 1, 00,000 in the second week. If the defendant did not pay by three weeks, the plaintiff shall be entitled to the claimed damages of Rs. 20, 00,000. The defendant paid the damages of Rs. 50, 000 within the first week!

The singular feature of this decree is that the courts apart from creating an inbuilt mechanism for enforcement of its order has also shown the innovativeness and seriousness of awarding damages in trademark cases. This is a unique and first of its kind order where the damage amount increases exponentially.

A BREATH OF FRESH AIR! A new lease of life is given to the extension provision to file opposition under Indian Trade Marks Act, 1999

My favourite topic of extensions to notice of opposition continues! Though, this time there are no conjectures and “we should” and “we should not” scenarios, rather a good decision by the Trade Marks Registry which should go a long way in settling the debate of extensions.

Recently in the case BM Birla Heart Research Centre v. Shree Rajmoti Industries, Gujarat 2007 (34) PTC 288 (Reg), the Joint Registrar of Trade Marks, Shri MH Mahendra passed an order which hits the nail on its head.

The “nail” that is being talked about is the ever-raging debate of extension for filing notice of opposition to trade mark application. More particularly, the issue is the validity of request for one month extension that the opponents file after the expiry of statutory three months, but before the expiry of four months from the publication of the trade mark in the Trade Marks Journal.

The facts of the case are very simple. An extension was filed by the opponents after three months. The question was if this extension should be taken on record. The Joint Registrar held in favour of the opponents allowing the extension. The most important aspect of this decision is, once again, that Trade Marks Rules cannot over-ride the Trade Marks Act and the intent of the legislature has to be considered. The points which touch a cord are mentioned below:

1.Procedural requirements must be construed as directory in nature and not mandatory, unless statute prescribes otherwise;

2.Use of the term “shall” in Rule 47(6) of Trade Marks Rules is not sufficient to treat the Rule as mandatory. Even though the word “shall” prima facie indicates that it is mandatory, yet the court must ascertain the real intention of the legislature by looking at the statute as a whole. The Rules cannot transcend the directory level and be considered as mandatory;

3. A bare reading of Section 21(1) and Rule 47(1) indicates that there was never the intention of the legislature to make Rule 47 (6) mandatory. In other words, harmonious constructions, is the call of the day;

4. By construing the provision strictly and inflexibly would result in barring an entire species of cases whereby bona fide proprietor of trade mark becomes aware of conflicting mark after three months of publication of the mark in the Journal, but before four months regardless of bonafide genuineness of the opponents;

5. The discretionary powers of the Registrar stand to be fettered by rigid following of the provision;

6. An interpretation of a statute cannot be detriment to the public and rather such narrow interpretation would shake judicial conscience and adversely affect the cause of the justice.

It is a breath of fresh air that this decision has come. There have been few decisions earlier which have addressed this issue, though I feel this is the best of the lot. It seems that the Registry is finally taking, albeit gradually, steps that should address this blatant discrepancy in the Trade Marks Act, 1999. The old Trade and Merchandise Marks Act may have been repealed, but the spirit cannot die and it is this spirit that requires to be invoked in the present Act. After all it makes no sense to complicate some issues that were never issues once upon a time.

“WITH GREAT POWER COMES GREAT RESPONSIBILITY” - Indulgence of Indian Trade Marks Registry for leading evidence in opposition proceedings

The current Trade Marks Act of 1999 came into force on September 15, 2003. Amongst the several changes that this Act brought about, one of the prominent features addressed was the necessity to cut down the length of opposition and rectification proceedings, at least to the extent of finishing the pleadings within a stipulated time frame.

The old Act like the new Act prescribed statutory time limits to file the notice of opposition (with 4 months) and counter statement (within 2 months). The old Act, however, did not prescribe any time limit to lead evidence in support of opposition and counter statement. Non-prescription of time limit led to the malpractice where extensions for leading evidences ran into years! Since no justification was required for seeking extension as long the requisite form TM-56 was filed. The fee was nominal (Rs. 20/-) and therefore it was not a burden for either parties to keep seeking extensions and protract the matter for long period, perhaps indefinitely.

To curb this practice, the new Act prescribed fixed time limits to lead evidence i.e. maximum three months to lead evidence in support of opposition and counter statement each. This three month period includes one month of extension, which has to be sought before the expiry of two months along with a fee of Rs. 500/-.

This brought much needed relief to parties involved in trade mark tussle. This also brought about situation, where the Trade Marks Registry started construing this three months period very strictly and parties, who had filed evidence post three months, were being refused. The attorneys on the other side also started crying for blood if evidence was filed beyond the prescribed three months. Little did these attorneys realise that someday they would be in the same boat.

Suddenly, there was need to interpret the law. The question being –

“Is the prescribed period of three months non-extendible? Or in other words does the Registrar have the powers to extend time?”

The answers to these questions have now long been decided. Probably the first case where this question was decided under the new Act was Asian Paints v. RTM 2005 (30) PTC 444 (IPAB). IPAB relied upon the full bench judgement of Hastimal Jain v. RTM 2000(24) PTC Delhi (Full Bench) and held that provisions of subordinate legislation (Trade Marks Rues, 2002) have to be in conformity with provisions of principle legislation (Trade marks Act, 1999). It has now been decided that by passage of new Act does not mean that the spirit that was imbibed in the old Act has also died. It is also now settled law that it is within the Registrar’s discretionary powers to grant extension of time to lead evidence.

The latest in line of such discretion to be applied is the disposal of interlocutory petition in opposition No. CAL-224252 between Larson & Toubro Limited v. Linear Technology Corporation. The Registrar relied upon the Asian Paints and Hastimal Jain and observed that “procedural prescriptions are the hand maid, not mistress, a lubricant, not resistant n the administration of justice…”

Merely because extensions have been granted on a regular basis, does not mean that the allowance of extension to lead evidence is a matter of right of the opponent or the applicant. It is a matter of discretion of the Registrar based upon sound reasoning not arbitrary or whimsical.

The discretionary powers the Registrar is vested with under Section 131 of the Act are vast. However, this discretion requires to be based upon sound principles of justice, equity and good conscience or as Uncle Ben tells Peter Parker (Spiderman) - “With great power, comes great responsibility”. To wield this discretionary power in cases of allowing extension to file evidence, the Registrar should consider the following points:

(a) The genuine reason and intention for seeking extension by the opponent or applicant;

(b) The conduct of the parties which requires extension beyond statutory period i.e. is the party unnecessarily delaying the leading of evidence by resorting to frivolous excuses;

(c) If the party has periodically sought extension before the time period expired;

(d) The evidence that the party desires to bring on record. There are times, when parties have brought on record evidence which could not possibly have taken more then three months to compile;

(e) The home country of the party leading evidence. A company may be based abroad and have certain laws and customs which made it impossible for the party to compile the evidence and file it within prescribed period;

(f) If the party is an applicant or the opponent. Generally, the applicant has more at stake, having filed the application and therefore consideration may be given in this regard. However, this is not a set rule and decision to this extent has to be taken into account by considering all factors in totality.

(g) Any other factor that the Registrar may deem fit to allow the extension.

These are just few points which the writer feels should be kept in mind by all the three parties-Registrar, opponent and applicant- before deciding if extension should be allowed.

New Member

Hi I am Rajesh and I specialise in patent laws. I woudl be contributing henceforth on this blog

A bit about Patent Searches

In case of patents, if the invention that is being searched has already been anticipated in the world, then potential patent for similar invention (unless of course one is able to prove novelty and non-obvious) is more or les compromised. Since the search requires taking into account searching all kinds of records around the world, the enormity of the task is hard to ignore.

Here again, it is practically impossible to inspect all records in every country around the whole for reasons such since the time that would be spent carrying out such an activity as well the costs that would be incurred would be enormous. Even if one were to carry out such an exercise, there is still no surety of the accuracy of the results. Therefore, patent searches are more or less an approximation with an effort to find patents that come closest to the invention for which search has been conducted.

With the above in the background and near impossibility of having all the records of world in hand yet, patent searches require to be conducted through the next best source. In today’s world, the online databases of the patent offices have been interlinked and there are private companies which have after painstaking efforts compiled nearly all the patents documents together on online databases. While these databases of patent offices and private search companies still cannot be said to be complete, but are considered as good sources as at least more or less complete in terms of the patents that have been filed. One portion of information which has been compiled and centralised forms the source for conducting patent searches.

To give an example of the enormity of the project, in USA itself there are over 5 million U.S. patents, consisting of 100-200 gigabytes of text. There are also more than 40 million pages of bitmap images, making up 4-5 terabytes of data. Patents range in size from a few kilobytes to 1.5 megabytes. [Source: A Patent Search and Classification System by Leah S. Larkey]

The patent searches are conducted in online paid and free patent databases. The patent search does not account for applications that have not yet been disclosed by the patent offices by reasons of secrecy directions or non-publication of the patent specifications or some other reason. The patent search also does not account for any invention, technology, prior art that is already in existence which has not been documented or patent application has not been filed. Further the patent search does not include prior art that may have bee used in the market since these are not documented facts. In case more information is required about certain technology or patent or scenario then market survey and investigations can be conducted.

As can be observed patent searches are not foolproof. Rather, patent search is an inexact science depending on numerous factors and circumstances. However, patent searches provide a reasonably good source of information of “what not to do” and developing a patent strategy. Therefore, everything said and done, patent search are always recommended. It is better that you are forewarned about prior rights then being sued for large sums of money by prior patent holder.

The costs of patent searches may vary from as low as US$ 200 to as high as US$ 3000 depending upon the several factors such as interalia kind of search, the opinion required, urgency, the field being searched, number of similar patents that are revealed upon conducting the search, patent offices where the search are being conducted or translations that may be required. Usually law firms charge for searches on an hourly basis since it is not possible to pin the time that would be spent on a particular search.

Another point which requires to be factored into a search cost is that of paid database. These databases usually have either a monthly charges or charge based upon each session. Further, if a search reveals conflicting art, then those documents have to be ordered. Here again it depend upon from where the documents are being ordered from and if these documents require to be translated. For instance the documents from Japan and China invariably require to be translated and the costs for translations are usually quite high since the documents are technical and precise translation is required.

The first search results usually reveal numerous patent documents. Therefore, the searcher requires sieving through these documents and refining the search result to pull out the relevant patent document that may be of relevance. To do this not only does it time but also experience of the searcher.

Further, while conducting patent searches the searcher also tries to obtain information and documents from other sources apart from databases of Patent Offices such as scientific journals, professional journals and other such literature. Here again, the literature may or may not be easily available and the discovering of such literature depends largely of the proficiency of the searcher and a bit of good luck cannot be ignored.

Thus, to put a figure on how much a search would cost is not easy. It has often happened that the cost of searches been more then writing patent claims. It is doubtful that anyone with surety be in apposition to compare the difference of costs between two searches. As said above, a search can be completed with few hundred dollars or may take thousands also.

These are the thoughts which have been going through my head and i Have finally put them down!

Reinstatement of rights of an applicant after failure to enter into the national phase

According to PCT Article 24(1)(iii), if the applicant fails to perform the acts referred to in PCT Article 22 or Article 39 (1) within the applicable time limit (i.e. either within 30 or 31 months) the international application will cease to have effect in any designated State with the same consequences as the withdrawal of any national application in that State.

Article 22 or Article 39 (1) requires an applicant to furnish following acts/things in common:

(a) a copy of the international application and a translation thereof (as prescribed) [not necessarily everywhere];
(b) submission of required national fee;
(c) requisite information as to applicant/inventor to file a national phase application.

How to get an application (international PCT application) for patent reinstated/revived:

If the national law of a designated State provides for excuse of delay in respect of national applications, it will be possible, under PCT Article 48(2) for the Office to excuse, for reasons admitted under its national law, any delay in meeting any time limit also in respect of international applications.

All national provisions related to the excusing of delay are generally applied to international applications in the same way and under the same conditions as they are to national applications. Examples of such provisions are those that allow reinstatement of rights, restoration, restitutio in integrum, revival of abandoned applications, further processing, continuation of proceedings, and so on.

In other words, if a procedure for reinstatement of rights is in place in any of the designated States in which one wish to enter the national phase, it must be applied to international applications which have ceased to have effect in those designated States because the time limit to enter the national phase was missed.

Article 48(2) provides that:

(a) Any Contracting State shall, as far as that State is concerned, excuse, for reasons admitted under its national law, any delay in meeting any time limit.\

(b) Any Contracting State may, as far as that State is concerned, excuse, for reasons other than those referred to in subparagraph (a), any delay in meeting any time limit.

A person may also be able to reinstate his application in certain designated Offices by using PCT Rule 49.6 which entered into force on January 1, 2003.

Under this rule, the majority of the designated Offices are required to provide the possibility to reinstate the rights of the applicant with respect to an international application where the applicant failed to comply with the requirements laid under PCT Article 22 or 39.1. The excusing of a delay is understood as any decision which has the effect of the international application being treated as if the time limit had not been missed. The condition laid down by the national law of each designated offices are decisive in determining whether a delay must be or may be excused. The Offices concerned will, upon request of the applicant, reinstate the rights of the applicant in respect of that international application if they find that the delay in meeting the time limit was:

(i) was unintentional; or

(ii) was at the option of the designated Office.

(iii) occurred in spite of due care required by the circumstances having been taken.

We can correlate options (i) and (iii). These two somehow indicates the absence of intention or deliberation to enter into any national phase on the part of the applicant and/or agent of the applicant. Option (iii) indicates the lacuna to file an application which has been created by the designated office to be entered and in that case if such office is satisfied with the reasons that the applicant can not be held responsible for the failure, such offices will reinstate the application.

According to PCT Rule 49.6(b) and (c), the request to reinstate an applicant rights should state the reasons for failure to comply with the applicable time limit and fulfill the requirements therewith under PCT Article 22, which should be submitted to each designated Office concerned. The acts referred to in PCT Article 22 should be performed within whichever of the following periods expires first:

(A) two months from the date of removal of the cause of the failure to meet the applicable time limit under Article 22; or

(B) 12 months from the date of the expiration of the applicable time limit under Article 22;

Apart from these time limits the applicant may submit the request at any later time if so permitted by the national law applicable by the designated office. (…This is proviso….)

In majority of cases the issue of reinstatement revolves around only one question i.e., what is the cause of failure to enter into separate national jurisdictions? Does it fall under point (i) and (iii) discussed above? Burden lies only on the applicant and he can be rescued or his application be revived only if the applicant comes clean with substantial proof/reasons evidencing the fact that the delay was unintentional on his part or better say fulfill above discussed point (i) and (iii).

Now presuming a situation where an applicant has failed himself to enter into a national phase of concerned office. There are following important elements to be taken care of –

(a) Cause of failure – must be of the nature as described in point (i) and/or (iii) discussed earlier, we have to evade point (ii). Now suppose one fulfills the requirements of (i) and/or (ii),

(b) Removal of such cause of failure – concerned designated office has to be impressed/satisfied with the reason shown alongwith the necessary evidence resulting into the grant of the request to reinstate.

(c) Period of two months – applicant has to fulfill all the requirements of Art. 22 to enter into national phase within two months from the date of grant of request to reinstate issued by the concerned designated office.

Here we are, the application in question is reinstated in the national phase of that concerned designated office. This is the way and the wholesome idea to proceed further.

Now an open question – what could be considered an unintentional delay: This is more or less a question of fact. Absence of intention/deliberation, something where intention is missing or absent. Let me illustrate an example of unintentional delay : suppose an applicant has entrusted all the responsibility of his patent application to an agent who has to enter into national phase of a country on behalf of the applicant and has given all necessary instructions/information in this regard to that agent. Unfortunately after that, let us presume that the agent go bankrupt, loses control of his work/business. One more thing, due to peculiarity of the situation despite all the best efforts of the applicant, he loses control of the information relating to the status of his application. Then in this situation we can say that the delay on the part of the applicant is unintentional and he has every right to get his application reinstated.

Apart from this, Rule 49.6 (d) provides that certain designated Offices require the payment of a fee in respect of this request, and some may require a declaration or other supporting evidence. For example:

(1) Evidence by way of affidavits or statutory declarations or oral evidence;(2) Evidence that the lapse was unintentional on the part of the applicant or agent;(3) Evidence that no undue delay occurred before the request was made;(4) Evidence that due diligence and prudence was exercised on the part of the applicant or agent;
(5) Advertisement of the request and provision of a period for others to oppose the granting of the request;(6) Case laws supporting the decision to grant the request etc.

Some Offices that apply the “unintentional” standard simply require a statement explaining that the failure to meet the time limit was unintentional. The requirements of each Office, including the criteria for reinstating the international application depends on the local national laws of the offices concerned.

In this regard, a point worth notable is that PCT Rule 49.6 applies to both designated Offices (where the national phase is entered under Chapter I - i.e. within 20 or 21 months) and, by virtue of PCT Rule 76.5, to elected Offices (where the national phase is entered under Chapter II of the PCT i.e. within 30 or 31 months).

Now something interesting, some designated Offices have notified the IB under PCT Rule 49.6(f) that PCT Rule 49.6 is incompatible with their national law and thus that they are not obliged to reinstate rights under PCT Rule 49.6(a) to (e). Any reinstatement request sent to such an Office will be dealt with in accordance with the applicable national law, which may be more or less favorable than the provisions of PCT Rule 49.6. The Offices which have notified the IB of such incompatibility are as follows:

Canadian Intellectual Property Office
China Intellectual Property Office
Croatian Intellectual Property Office
European Patent Office
German Patent and Trade Mark Office
Intellectual Property Office of New Zealand
Intellectual Property Office (Philippines)
Japan Patent Office
Korean Intellectual Property Office
Latvian Patent Office
Mexican Institute of Industrial Property
Patent Office (India)
Polish Patent Office
United Kingdom Patent Office

Why these offices are not in line with Rule 49.6 because PCT Rule 49.6, is a rule being in the nature of a minimum obligation, an optional guideline not mandatory one to safeguard the interests of those honest inventors/applicants who somehow miss the time limit to enter due to valid reasons fulfilling the requirement laid down therein.

To be more precise, , designated Offices are free to implement provisions which are even more or less favorable than those provided by PCT Rule 49.6. Notably most of the designating offices listed above have national procedures in place for excusing delay.

For example: Canada – allows late entry upto 42 months under sub-section 58(3)(b) with payment of additional fee. Similarly;

New Zealand provides extension of one year under Section 93A of the New Zealand Patents Act, to file a convention application and for a late entry into national phase IPONZ (New Zealand) practice as established by Patent Office Practice Note No. 1997/2 in Journal 1413 provides the whole procedure.

European Patent Office (EPO) - Applications for restitutio in integrum are governed by article 122 EPC. Article 122 EPC states:

"The applicant for or proprietor of a European patent who, in spite of all due care required by the circumstances having been taken, was unable to observe a time limit vis-á-vis the European Patent Office shall, upon application, have his rights re-established if the non observance in question has the direct consequence, by virtue of this Convention, of causing the refusal of the European patent application, or of a request, or the deeming of the European patent application to have been withdrawn, or the revocation of the European patent, or the loss of any other right or means of redress".

Applications must be filed in writing within 2 months from the removal of the course of non compliance with the time limit. The omitted act must also be completed within this period. The application is also admissible within the year immediately following the expiry of the unobserved time limit.

However, the requirement for establishing "all due care" is relatively strict in Europe. All due care can be established by showing firstly that the applicant has a system for observing time limits, which can be shown to be normally satisfactory. Secondly, if it can be shown that, in a normal satisfactorily operating system, there was an isolated mistake, then restitution will normally be allowed.

Where an applicant is represented by a professional representative before the EPO, a request for establishment of rights cannot be acceded to unless the representatives themselves shows that he (she) has taken the due care required by an applicant required under Article 122 (1) EPC (J0031/90, July 10, 1992).

At the same time – some countries have reservations and no procedure in place to reinstate an application, for example: India – we know that there are no provisions to reinstate, once a person miss the deadline to enter into national phase, he is finished.
The content of this post is based on the reference books and the contents available on the Internet. For a better understanding of the provisions of PCT referred to in here, I recommend the readers to visit the http://www.wipo.org/.

With a pinch of “salt” –The origin of Section 3(d) controversy

Two separate pre-grant oppositions under Section 25(1) of the Patents Act, 1999(“Act”) were filed before the Opposition Board, Chennai (“Board”) respectively by Natco Pharmaceuticals and Ranbaxy Laboratories Limited both on May 26, 2005 to the patent application No. 1602/MAS/1998 of M/s. Novartis AG for an invention titled “Crystal Modification of A.N.-Phenyt-2-Pyrimidineamine derivative, processes for its manufacture and its use”. Novartis’s application filed in India on July 17, 1998 claimed priority 18th July, 1997 from the corresponding application in Switzerland.

The issues involved in both the pre-grant opposition were more or less identical. In the opposition filed by Ranbaxy the issues involved were of (1) priority claims, (2) anticipation and (3) prohibition of grant of patent under Section 3(d) of the Act. Natco’s opposition, in addition to, priority claims, anticipation and prohibition of grant of patent under Section 3(d), also involved the fourth question obviousness of Novartis’s invention. On January 25, 2006, the Board decided in favour of the opponents on all counts and refused the patent application of Novartis.

Briefly and simply put, the patent application of Novartis claimed the beta-crystal form of the imatinib mesylate. Interestingly, the Invention of the base compound imatinib had already been disclosed in the European Patent in 1993 and its equivalent United States Patent (US Patent).

On anticipation by prior publication, the Board held that the opponents, Ranbaxy and Natco, were correct that the invention of the Novartis has been anticipated by prior art. The opponents succeeded in proving that the salt imatinib mesylate is already known from the prior art publications and that the salt normally exists in the β-form which is the most thermodynamically stable product. To prove this the opponents put on record the following –

(a) The prior US Patent of 1993 and its equivalents that specifically mention imatinib mesylate as the product. Though Novartis argued that the US Patent just disclosed the free base and not the salt, the Board observed and held otherwise stating that claims in the US Patent specifically mentioned the salt prepared from the free base;

(b) Publications such as Nature Medicine (5th May, 1996), Cancer Research (Vol. 56, Issue I, 1996) and Blood (1st November, 1997) wherein imatinib mesylate has been disclosed. Hence, there was no human intervention or ingenuinity in the preparation of beta-crystalline form of the salt imatinib mesylate

Similarly the Board decided in favour of the opponents who were successfully able to prove that the salt imatinib mesylate inherently existed in the β-crystalline form and that it is obvious for a person skilled in the art to prepare corresponding pharmaceutically acceptable salts especially in view of the disclosure provided US Patent of 1993 and its equivalents. To support its claims, the opponents had submitted reports of two reputed government institutions -Indian Institute of Chemical Technology, Hyderabad and Indian Institute of Technology, Delhi. Both IICT and IIT found the salt exists in the β-crystalline form, which is thermodynamically most stable form. These institutes performed the experiments at least ten times and at all times the crystals were found to exist in the β-form. Hence, it was held that the product claims by Novartis were obvious to a person skilled in the relevant art especially as the teaching to prepare the salt already existed in the US Patent and equivalents.

The Board also decided that the priority as claimed by Novartis for its patent application in India from its corresponding Swiss application filed on July 18, 1997 was incorrect and the said priority cannot be claimed. The reason for this is that up till the filing of the patent application by Novartis in India i.e. July 17, 1998, Switzerland was not a convention country. Switzerland became a convention country in September 1998. Interestingly, Novartis despite knowing this position chose to remain quiet and did not amend its application accordingly.

The last issue that was dealt by the Board was the issue of section 3(d) of the Indian Patents Act, 1999. This is a unique Section which appears only in the Indian patent law. Simply put Section 3(d) provides that polymorphs, metabolites, pure forms, salts, esters, derivatives etc cannot be regarded as inventions that are patentable unless these show an “enhanced efficacy”. Further simplifying, a new form a known substance cannot be granted patent in India. In this case, the Board held that the invention of Novartis is “only a new form of known substance”. It was also held that there is no enhancement of the known efficacy of the β-crystal form over the known substances. Hence the Board concluded that the subject matter of this application is not patentable under Section 3(d) of the Patents Act.

Therefore, the Board refused the patent No. 1602/MAS/1998 of Novartis holding it to be contrary to section 3(d), prior anticipated, obvious and incorrect priority claimed. Novartis has appealed against the order as well as challenged the constitutional validity of Section 3(d) in the High Court of Chennai. The matter is sub judice.

The lessons that can be learnt from the above situating are-

Patent attorneys must ensure while claiming priority from a country in India, ensure that such country is in fact a convention country.

Corollary of lesson 1 is that the applicant/ patentee should have a patent strategy in place to avoid running into such situations regarding priority. Do not forget, priorities may make or break a patent.

Every country has different domestic laws. Therefore, while filing or after filing (if there is no time) and before the issuance of first Patent Office action, it is imperative for the patent attorneys in the domestic country must revisit the claims to see if the claims are in conformity with domestic laws rather the leave it for the last minute.

If there are any amendments/changes/corrections that require to be carried out, then such changes must be immediately carried out to avoid any third party alleging that fraud has been committed by the applicant/patentee.

Before filing an application the patent attorney should honestly inform the applicant the problems that the application may face in India.

Nibbling on Nimbus is DD??

The Nimbus Prasar Bharathi controversy continues. I cannot help but feel bad for Nimbus. To fight against the government is not the easiest of things. The Government after listensing to the cries from Prasar Bharati that seven minutes delay will not work for them, promptly promulgated the ordinance that makes it mandatory for private sports channels to share live feed of any international sports event with Prasar Bharti

Nimbus is sticking by its earlier position and says that it would follow the court’s order to the fullest. They say that they have done nothing wrong by giving a seven minute delayed feed of the Kolkatta match to Doordarshan. Nimbus’s essential problem is still regarding the ordinance requiring them to share live feed with Doordarshan for their DTH (Direct To Home) service as well as cable homes with Doordarshan.

It is interesting to know the opinion of the Delhi High Court on February 8, 2007. Justice B.D. Ahmed remarked-'Why was the government so swift in bringing an ordinance. The rule of law should not have been subverted. It brings bad taste in mouth, when there is subversion of judicial process,'

Clearly it seems that on the face of record, the court does realize that this is a subversion of rule of law and contrary to the legitimate interests of Nimbus. The hearing is appointed for February 12, 2007 and hopefully this issue would be settled for once and for all. I also hope that the court holds the ordinance as subversiuon of rule of law and justice is met.

IPO – an electronic revelation!

There is good news for patent attorneys in India- the Indian Patent Office (IPO) is going electronic!

Sounds good right! There have been series of meeting that have been talking place between patent agents and attorneys in the Delhi Patent Office. There must be such meetings in other three Patent Offices at Chennai, Kolkata and Mumbai as well, but I am not sure so I will not commit or comment.The meetings involve discussions about substantive law and as well as things such as the stereotypical objections raised by the IPO in the first examination reports (FER). But this is topic for another day and for the present I shall restrict myself to reporting the electronic revelation.

The Controller Mr. BP Singh in the meeting on February 2, 2007 unveiled the prototype of the electronic filing system for patent application filing as well as updating other information and documents pertaining to the patent application. Some of the salient points are-

(a) The online filing by the patent agents and attorney, which obviously saves the time to gruelling travel to Dwarka;

(b) Immediate generation of fee receipt. Thus there is no longer the “conventional” paper letters requesting for the fee receipt;

(c) Immediate issuance of application number to the patent application;

(d) Creation of account for the patent attorneys and agents to pay the fee online;

(e) Issuance of FER by electronic means and no more hand written paper FER;

(f) Replies and responses to FER can be electronically uploaded or sent to the Examiner / Controller

These are few of the features which are apparent and have been communicated. There are drawbacks also such as what happens if the sever of the IPO is down and it is a last date case or a priority application filing. Another concern for patent attorneys and agents is the time limit to submit the fees. The Controller did not give a clear answer if the fee has to be paid by six in the evening or till midnight. After all if the system is electronic then the priority would be for the “day”, not fixed for a particular “time”. A solution would be the bringing back of the provision of filing fee within a month after submitting the documents. The popular reason given is that this provision of one month is being misused as people are filing divisional applications without fee and if the parent application is accepted, then they do not pay the fee. There is a remedy to this; for divisional applications make it mandatory that the fee has to be given to IPOP and if it is not given then the parent can be revoked.

Another aspect is the amount of data that can be stored which has direct impact on the speed and connectivity to the IPO server. These are probably being address within the IPO, but I am always sceptical about how things work beyond the red tape.

In any case, without being overly pessimistic, we must look at the bright side that this is a big advance for the IPO to be going electronic and genuine efforts of the IPO should be commended. After all half the battle is won when the intentions are good.

“Mashelkar” the “New Chemical Entity”

My first reaction on reading the Mashelkar Committee’s “Report of the Technical Expert Group on Patent Law Issues, December 2006” was –“WOW!!”

The report is extremely concise, to the point and more importantly an honest report on the issues of patentability of New Chemical Entities (NCE) and micro organism.

Briefly, the reason for the Report was that when the Patents (Amendment) Bill, 2005 was introduced in the Parliament in March, 2005 for debate to make the Patents Act compatible with India’s international obligations under the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS Agreement), issues regarding patentability of micro-organisms and the definition of 'pharmaceutical substance' to mean “a new chemical entity (NCE)” or “new medical entity (NME)” were raised. It was then decided that a Technical Expert Group on Patent Law Issues should be set up to discuss and come out with findings.

The issues referred, therefore, were two i.e. to quote verbatim from the Report-

1. whether it would be TRIPS compatible to limit the grant of patent for pharmaceutical substance to new chemical entity or to new medical entity involving one or more inventive steps; and

2. whether it would be TRIPS compatible to exclude micro-organisms from patenting.

Amongst other things, I liked the approach which the Committee took i.e. “consultative approach” which included industry associations, non-governmental organizations, intellectual property attorneys, etc. The Group studied the inputs received and also took into account other relevant literature to arrive at their assessment.

The Report concludes that it would not be TRIPS compliant to limit granting of patents for pharmaceutical substance to New Chemical Entities only and excluding micro-organisms per se from patent protection would be violative of TRIPS Agreement.

The Report very succinctly states that it is important that “incremental innovation” of NCE should be allowed and “evergreening” should be discouraged. To this extent the Report distinguishes between “incremental innovation” of NCE should be allowed and “evergreening” by stating what IP Institute, London has stated:

"It is important to distinguish 'ever-greening' from what is commonly referred to as 'incremental innovation'. While 'ever-greening' refers to an extension of a patent monopoly, achieved by executing trivial and insignificant changes to an already existing patented product, 'incremental innovations' are sequential developments that build on the original patented product and may be of tremendous value in a country like India. Therefore, such incremental developments ought to be encouraged by the Indian patent regime.”

The Report is futuristic and highly progress oriented for India and would be welcomed with open arms by Indian pharmaceutical companies that are in constant battle with foreign pharmaceutical company. The only way Indian pharmaceutical companies have managed to stay in the race is by innovation. The Committee’s Report emphasising on “incremental innovation” puts forth the message that Indian Patent Office has to open its mindset and has to understand the distinction between “evergreening” and “incremental innovation”

More importantly, Section 3(d) of the Indian Patent Act, 1970 has to be interpreted with an open mind. The minute the Patent Office sees that there the patent application involves an advancement of a NCE, it immediately applies that Section 3(d) of the Act applies and the invention s not patentable. Section 3(d) of the Act reads as –

" The following are not inventions within the meaning of this Act, -
….
….

(d) the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.
Explanation.—For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy;".

This section is a negative Section which states that certain things are not patentable. The Section clearly means “certain things”, not everything. This is where the problem starts. The Indian Patent Office (IPO) considers that the Section excludes everything from patentability especially if it is in regard to pharmaceuticals. The attorneys are at continuous logger head with the IPO that if the new pharmaceutical substance satisfies the three criteria for patentability, the bar under Section 3(d) cannot apply. Of course, the onus is on the patent attorneys to ensure that they should advice the clients if there is a clear case of “evergreening” rather then criticising the IPO. To be fair on the IPO, it is finding its feet in this rapidly evolving IP world.

I would say that the Examiners should be trained and the IPO library should be stacked with patent law books from around the world that would help the Examiners to understand the subject better and also help immensely to examine the patent applications at a world class level. To this extent in a meeting between the patent agents, patent attorneys and Controller of Patents yesterday, the Controller said that Examiners are being sent abroad to understand patent practices better and subsequently apply the same in India.

Coming back to the topic of NCE, it is interesting that the grant of patents only to NCE would severely hamper the pharmaceutical industry which is finding its feet. If reports are to be believed that only 32% of some 1200 pharmaceutical substances were declared by US FDA (unsubstantiated report) as NCE goes to show to research ad develop NCE is not easy. It takes millions of Rupees to develop NCE and at the moment no Indian company has such financial strength. The strength of Indians has always been in their ability to innovate and it is in national interest that this ability should be protected and encouraged. By just allowing patents for NCE therefore is definitely not the solution or the way to grow

I would love to see the report being implemented in the IPO. According to me while the report is extremely good, its implementation is what will decide the future of the Indian patent law and Indian pharmaceutical companies. The onus is now on the government to bring this report either into an amendment format or as guidelines for IPO.

Nimbus, DD and broadcasting

It seems that Indian cricket always believes in the philosophy that change is good and adheres to this adage under all circumstances. If it is not about the Indian team performing, then it is not about who will be the chief of BCCI or the return of old warhorses like Saurav Ganguly. The latest controversy to hit Indian cricket is not on-field or off-field but ethereal, if I may use the term in not the regular English way.

The controversy revolves about the broadcast rights for the India-West Indies four match series for which Nimbus Sports has obtained exclusive rights from Board of Cricket Control for India (BCCI). Nobody thought twice about the fact that Nimbus Sports had obtained the rights for broadcast. The issue arose when Nimbus Sports refused to share the Cricket feed with Doordarshan (DD) for the first one day international. Consequently, millions of people in India were unable to watch the cricket match. Nimbus offered DD fifteen minutes delayed advertisement free broadcast, which DD refused. Eventually the feed given to DD is seven minutes delayed.

DD says that this is an “unpatriotic” act by Nimbus since cricket is a religion in India and therefore public interest is at stake. Nimbus says this is business and they have bought the rights for broadcast for several millions and beating stiff competition from ESPN-Star Sports and Ten Sports.

BCCI realized that there is a huge amount of money to be made out of the broadcast rights. Therefore it sold the rights to build on it’s already cash heavy coffers without taking into consideration if the buyer has the ability i.e. infrastructure to broadcast the matches to the masses. BCCI, obviously, does not care as long is its gets the money.

As for Nimbus, it rightly bought the rights for a large sum of money and therefore rightly has reasons to recover the money in this commercial venture. However, Nimbus by not providing the telecast to millions has also provoked public ire. It seems that Nimbus had forgotten that in India a lot of things work differently and public outcry can result in tremendous political pressure. After all the politicians have to keep their vote banks happy with small pleasures of life if not the basic amenities. Maybe Nimbus think tank will keep this as a lesson learnt in time and not repeat its mistake.

DD, in the guise of public interest has attempted to free load the Nimbus party. Let us not forget for one moment there is a lot of money to be made by way of advertisements. Clearly, DD did not think it was necessary for it to bid for the rights as it would anyways get the rights. While, public interest would demand that DD has the right to telecast this mass game as DD has the infrastructure to bring it to the masses, however public interest does not demand that DD make money out of this.

In fact Nimbus appears to be getting the rawest deal because as per the Cable Television Networks (Regulation) Act, 1995 requires that the cable operator has to provide two DD channels free of cost to the consumers. In effect, if DD gets the free feed without any conditions, then the whole purpose of buying the exclusive rights by Nimbus is defeated. The cable operator, therefore, need to not get a license from Nimbus as the telecast is free in any case. In effect, Nimbus after investing millions of Dollars does not get to make any money out it.
As the situation now stands Nimbus appears to be making every effort to amicably settle the matter by providing DD the seven minutes delayed feed. DD in all fairness should accept this as the right solution after all merely being government agency does not mean it can coerce Nimbus into any deal it wants.

As a last word, much awaited Broadcasting Act desperately requires to come into force.