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/.
Thursday, April 05, 2007
Thursday, February 22, 2007
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.
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.
Sunday, February 11, 2007
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.
Wednesday, February 07, 2007
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.
Saturday, February 03, 2007
“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.
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.
Monday, January 29, 2007
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.
Sunday, October 29, 2006
On the Fast Track at the Indian Patent Office
Frankly, I didn’t quite believe it myself. But last month when I received a patent certificate for a patent application that I filed in April last year, my cynical approach and skepticism of the patent office and its functioning, beat a humble retreat.
Consider this, I filed a non-conventional patent application in the last week of April 2005. My client was in a mad rush to launch his product in the market and desperately required the patent grant, so as to reassure his investors and justify future expenditure on the project.
I therefore filed a request for early publication as provided by section 11 (2) of the Patents (Amendment) Act 2005 at the time of filing the application. This application was published in the official journal in the second week of August 2005. Thus, a request for early publication resulted in the application being published in 3 and a half months instead of the ‘at least’ eighteen months as is required by section 11(1), Rule 24. It should be remembered that the Patent (Amendment) Rules 2005 were in force at the time. The requirement that an application be published ordinarily within one month from the date of filing a request for early publication was introduced by the Patent (Amendment) Rules 2006, which came into effect from May 5 2006.
Following the publication, I filed a request for substantive examination in the third week of August 2005, i.e. within a week of the journal publication. A first examination report was issued in the fourth week of October 2005, that is, in approximately two months from the date of request. The examination report, in view of the Patent (Amendment) Rules 2005, then in force, stated that the application must be placed in order for grant within a period of 6 months. Accordingly, the application was to be placed in order by the last week of April 2006. This ironically happens to be exactly one year from the date of filing the application.
Again, it is pertinent to mention that the Patent (Amendment) Rules 2005 did not require that the examination report be issued ordinarily within 6 months from the date of request or publication, whichever is later. Thus the issuance of an examination report in a period of two months from the date of request indicates the Indian patent office is geared to accommodate the changes in time periods that have now been introduced by the Patent (Amendment) Rules 2006.
I filed a response to the examination report in the first week of November complying with the objections raised by the examiner and also followed it up by a telephonic discussion and finally a visit to the Patent Office in the third week of November, to iron out the pending objections. Thus the patent application was in order for grant in the last week of November 2005, a total period of seven months from the date of filing the application.
However, in view of existing procedures the application was technically placed in order for grant on the expiry of the period provided i.e. in the last week of April 2006. The application was then granted in the third week of June 2006 and the grant was recorded in the Register of Patents in the second week of September. The Patent Certificate was received by me in the last week of September 2006. As a result, the patent was granted in a period of 14 months from filing the application and a patent certificate was received in 17 months from the filing date.
From an era, not so long ago, where the time period between filing an application to grant of a patent took anywhere between 4 to 7 years and often longer, to have a patent granted within 14 months is a sign that the Indian patent office has truly evolved into a world class institution.
Having said that, it should be remembered that with the introduction of the Patent (Amendment) Rules 2006, the time period for placing the application in order for grant has been increased to twelve months from the date of issuance of the first examination report. Consequently, a patent should now realistically be granted in a period of 24 to 36 months, if one decides to be on the fast track.
Now here’s what I learnt from this experience:
1. Enclose a soft copy of your application and the drawings on a floppy or CD so as to assist the publication department of the Patent Office to publish the application early. They may or may not accept it, but the Mumbai and Delhi patent offices are warming to the idea.
2.Keep following up. Sometimes all it takes is a call every single day of the week to have your application published in time.
3.Don’t wait for the last month to respond to the FER or discuss the case with the examiner. If possible try and respond to the FER within three weeks of receiving it.
Ensure that all amended documents reach the examiner while the file is still with him.
Copyright Essenese Obhan
Consider this, I filed a non-conventional patent application in the last week of April 2005. My client was in a mad rush to launch his product in the market and desperately required the patent grant, so as to reassure his investors and justify future expenditure on the project.
I therefore filed a request for early publication as provided by section 11 (2) of the Patents (Amendment) Act 2005 at the time of filing the application. This application was published in the official journal in the second week of August 2005. Thus, a request for early publication resulted in the application being published in 3 and a half months instead of the ‘at least’ eighteen months as is required by section 11(1), Rule 24. It should be remembered that the Patent (Amendment) Rules 2005 were in force at the time. The requirement that an application be published ordinarily within one month from the date of filing a request for early publication was introduced by the Patent (Amendment) Rules 2006, which came into effect from May 5 2006.
Following the publication, I filed a request for substantive examination in the third week of August 2005, i.e. within a week of the journal publication. A first examination report was issued in the fourth week of October 2005, that is, in approximately two months from the date of request. The examination report, in view of the Patent (Amendment) Rules 2005, then in force, stated that the application must be placed in order for grant within a period of 6 months. Accordingly, the application was to be placed in order by the last week of April 2006. This ironically happens to be exactly one year from the date of filing the application.
Again, it is pertinent to mention that the Patent (Amendment) Rules 2005 did not require that the examination report be issued ordinarily within 6 months from the date of request or publication, whichever is later. Thus the issuance of an examination report in a period of two months from the date of request indicates the Indian patent office is geared to accommodate the changes in time periods that have now been introduced by the Patent (Amendment) Rules 2006.
I filed a response to the examination report in the first week of November complying with the objections raised by the examiner and also followed it up by a telephonic discussion and finally a visit to the Patent Office in the third week of November, to iron out the pending objections. Thus the patent application was in order for grant in the last week of November 2005, a total period of seven months from the date of filing the application.
However, in view of existing procedures the application was technically placed in order for grant on the expiry of the period provided i.e. in the last week of April 2006. The application was then granted in the third week of June 2006 and the grant was recorded in the Register of Patents in the second week of September. The Patent Certificate was received by me in the last week of September 2006. As a result, the patent was granted in a period of 14 months from filing the application and a patent certificate was received in 17 months from the filing date.
From an era, not so long ago, where the time period between filing an application to grant of a patent took anywhere between 4 to 7 years and often longer, to have a patent granted within 14 months is a sign that the Indian patent office has truly evolved into a world class institution.
Having said that, it should be remembered that with the introduction of the Patent (Amendment) Rules 2006, the time period for placing the application in order for grant has been increased to twelve months from the date of issuance of the first examination report. Consequently, a patent should now realistically be granted in a period of 24 to 36 months, if one decides to be on the fast track.
Now here’s what I learnt from this experience:
1. Enclose a soft copy of your application and the drawings on a floppy or CD so as to assist the publication department of the Patent Office to publish the application early. They may or may not accept it, but the Mumbai and Delhi patent offices are warming to the idea.
2.Keep following up. Sometimes all it takes is a call every single day of the week to have your application published in time.
3.Don’t wait for the last month to respond to the FER or discuss the case with the examiner. If possible try and respond to the FER within three weeks of receiving it.
Ensure that all amended documents reach the examiner while the file is still with him.
Copyright Essenese Obhan
Monday, October 02, 2006
Copyright v. Copyright- Indian Designs Act and Copyrights Act
In an interesting decision by the Delhi High Court several issues pertaining to the overlap between Copyright Law and Design laws were laid to rest in the matter between Microfibres Inc Vs. Girdhar and Co. and Ors. CS (OS) No. 1480/2002 Decided On 13.01.2006 {also 128(2006)DLT238, 2006(32)PTC157(Del)}
In this case the plaintiff, a US based company involved in the manufacturing, marketing, selling and exporting of upholstery fabrics, claimed that the defendants have violated its copyright in the artistic works applied to upholstery fabrics and alleged that the defendant attempted to pass off the goods of the defendant as that of the plaintiff.
The plaintiff stated that its upholstery fabrics are printed, unique and original artistic works which are conceptualized and drawn/printed by either its employees or other persons who have assigned the copyright in the works to the plaintiff. Thus the plaintiff claimed that this artistic work constitutes original artistic work as defined within the meaning of Section 2(c) of the Copyright Act. and protect able under the Berne Convention, Universal Copyright Convention read with Indian International Copyright Order, 1999.
The plaintiff claimed that in May 2002, the plaintiff discovered that defendant was manufacturing, marketing and distributing upholstery fabric. The upholstery fabric manufactured and sold by the defendant was stated to bear the artistic works which are identical copies or colourable imitations of the artistic work in which the plaintiff has a copyright and all the distinctive features of the plaintiff's artistic work was alleged to have been copied.
The primary defense raised by the defendants is that the plaintiff is not entitled to protection under the Copyright Act as the artistic works are actually designs relating to textile products and came within the scope of the Designs Act, 2000. The plaintiff had failed to apply for registration of designs in India under the provisions of the said Act or the predecessor Act being the Designs Act, 1911 (hereinafter referred to as the Designs Act, 1911) The plaintiff having failed to complete the requisite formalities under either of the two designs Acts, is alleged to be now seeking to claim protection under the Copyright Act, which is not permissible.
Defendant further claimed that in textile trade, the designs in use are built around permutations and combinations of a limited number of motifs/imitations drawn from various sources and requiring very little by way of distinguishing variations to claim originality. Thus the three fold submission of the defendants were:
i) The plaintiff was itself conscious of the fact that registration was required under the Designs Act and had applied for designs to be registered in U.K. under the local Designs Act;
ii) The certificate relied upon and issued by the United States Copyright Office refers to the subject as fabric designs and not artistic works;
iii) The Indian Patent and Designs Office has confirmed vide its letter-dated 19.07.2002 that the subject designs being textile designs are registrable under the Designs Act, 2000.
The defendants also alleged that the plaintiff is guilty of suppressio veri and suggestio falsi i.e. the plaintiff failed to disclose the prior litigation including criminal proceedings where investigation officer had submitted a report to the court clearly stating that no case under the copyright law had been made out.
In the conspectus of the aforesaid position, the eight issues were framed. We will restrict ourselves only to the relevant ones, which are -
1. Whether there is any Copyright in the stated artistic work of the plaintiff.
2. Whether any Copyright subsists in favour of the plaintiff in view of the provisions of Section 15 of the Copyright Act.
The plaintiff placed reliance upon the Berne Convention for protection of literary and artistic works. The plaintiff state that as per Article 16(a) of the Convention protection exists automatically and there is no registration required in India in view of India being a signatory to Berne Convention, the Universal Copyright Convention, 1971 and the International Copyright Order 1999 being promulgated.
The defendants emphasized that the crucial question to be considered would be whether the subject work in question is an 'artistic work' protected under the provisions of the Copyright Act or a 'design' under the Designs Act, 2000 (or the Designs Act, 1911). The defendants contended that the subject work in dispute is floral designs, which are applied upon fabrics used for upholstery through an industrial process. This is the reason why in United Kingdom the plaintiff has registered the subject work as a design. A practical proof of this is stated to be the letter dated 19.07.2002 issued by the Patent Office to the effect that 'textile design fabrics' are registrable under the Designs Act, 2000.
The defendants contended that the legislative intent behind the repealed Designs Act, 1911 and coming into force of the new Designs Act, 2000 remained the same and the exclusion of 'artistic work' in the definition in the new Designs Act, 2000 is only clarificatory and was intended to exclude only artistic work pure and simple such as paintings, sculptures and works of art.
The court held that in order for the work of the plaintiff to qualify as 'artistic work', it must fall within the definition of Sub-section (c) of Section 2 of the Copyright Act. A reading of the said provision would show that attempt of the plaintiff can only be to bring it within the concept of 'painting'.
The court observed that “there is no doubt that labour has been put and there is some innovativeness applied to put a particular configuration in place. Such configuration is of the motifs and designs which by themselves would not be original. The originality is being claimed on the basis of the arrangement made. What cannot be lost sight of is the very object with which such arrangements or works had been made. The object is to put them to industrial use. An industrial process has to be done to apply the work or configuration to the textile. It is not something which has to be framed and put on the wall or would have any utility by itself. The two important aspects are the object with which it is made (which is industrial) and its inability to stand by itself as a piece of art. In fact, it has no independent existence of itself.”
The court further held that In India there are special legislations governing the protection of different nature of rights. For instance the industrial designs the protection is provided under the Designs Act, 2000 and the now repealed Designs Act, 1911.
The court observed “An important and relevant aspect is that both under the old Act and the new Act, fabric designs on textile goods have been classified as proper subject matter of design protection by inclusion as a specific class in the Rules framed under the Acts. In the Designs Act of 1911, class 13 and 14 of the Fourth Schedule of the Rules dealt with printed or woven designs of textile goods other than checks and stripes and checks and stripes respectively. Such protection is now provided under Class 05 of the new Design Rules of 2001. Furthermore, the legislative intent is also to be kept in mind which is to provide protection for a certain period of time for commercial exploitation.”
Therefore nature of protection is quite different for an artistic work under the Copyright Act which is for the lifetime of the author / creator + 60 years. This is not so in the case of commercial exploitation as under the Designs Act and the Patent Act the period is much lesser. In the present case, the configuration was made only with the object of putting it to industrial / commercial use.
The exclusion of an 'artistic work' as defined in Section 2(c) of the Copyright Act from the definition of 'design' under Section 2(d) of the Designs Act, 2000 is only meant to exclude the nature of artistic works like painting of M.F. Hussain. It is, thus, the paintings, sculptors and such works of art which are sought to be specifically excluded from the new Act.
Thus, the intention of the legislature has been expressed as one to protect any artistic work which has to be commercially exploited by the owner of the copyright by not providing the protection under the Copyright Act, but under the earlier the Designs Act, 1911.
“To this extent, I see no difference between the intent under the old Act and the new Act. A perusal of the Statement of Objects and Reasons for introduction of the new Act, the handouts issued by the Design Office and the registrations made of textile fabrics both under the old Act and the new Act leave little manner of doubt that the protection for such configurations, designs or works (by whichever name it may be called) is provided under the Designs Act. It is, thus, apparently clear that in the context of the Indian Law, it is the Design Act of 1911 or 2000, which would give protection to the plaintiff and not the Copyright Act.
The application of mind and skill is not being denied nor the fact that the defendants have copied the same, but that would still not amount to the works in question being labeled as 'artistic work' within the definition of Section 2(c) of the Copyright Act and, thus, the protection is not available under the Copyright Act. Issue No. 1 is answered accordingly.”
As regards the second issue arising from the provisions of Section 15 of the Copyright Act. The Section provides that copyright subsists under the Copyright Act in any design, which is registered under the Designs Act, 1911 and in case a design is capable of being registered under the Designs Act, 1911, the copyright shall cease as long as any article to which the design has been applied has been reproduced more than 50 times by an industrial process by the owner of the copyright or his licensee.
The court held that the patterns and designs of the plaintiff were capable of registration both under the old Designs Act and the new Designs Act and the plaintiff failed to do so with the result that the protection is not available to the plaintiff, which would have arisen if they had been so registered.
The suit was accordingly dismissed in favour of the defendants.
In this case the plaintiff, a US based company involved in the manufacturing, marketing, selling and exporting of upholstery fabrics, claimed that the defendants have violated its copyright in the artistic works applied to upholstery fabrics and alleged that the defendant attempted to pass off the goods of the defendant as that of the plaintiff.
The plaintiff stated that its upholstery fabrics are printed, unique and original artistic works which are conceptualized and drawn/printed by either its employees or other persons who have assigned the copyright in the works to the plaintiff. Thus the plaintiff claimed that this artistic work constitutes original artistic work as defined within the meaning of Section 2(c) of the Copyright Act. and protect able under the Berne Convention, Universal Copyright Convention read with Indian International Copyright Order, 1999.
The plaintiff claimed that in May 2002, the plaintiff discovered that defendant was manufacturing, marketing and distributing upholstery fabric. The upholstery fabric manufactured and sold by the defendant was stated to bear the artistic works which are identical copies or colourable imitations of the artistic work in which the plaintiff has a copyright and all the distinctive features of the plaintiff's artistic work was alleged to have been copied.
The primary defense raised by the defendants is that the plaintiff is not entitled to protection under the Copyright Act as the artistic works are actually designs relating to textile products and came within the scope of the Designs Act, 2000. The plaintiff had failed to apply for registration of designs in India under the provisions of the said Act or the predecessor Act being the Designs Act, 1911 (hereinafter referred to as the Designs Act, 1911) The plaintiff having failed to complete the requisite formalities under either of the two designs Acts, is alleged to be now seeking to claim protection under the Copyright Act, which is not permissible.
Defendant further claimed that in textile trade, the designs in use are built around permutations and combinations of a limited number of motifs/imitations drawn from various sources and requiring very little by way of distinguishing variations to claim originality. Thus the three fold submission of the defendants were:
i) The plaintiff was itself conscious of the fact that registration was required under the Designs Act and had applied for designs to be registered in U.K. under the local Designs Act;
ii) The certificate relied upon and issued by the United States Copyright Office refers to the subject as fabric designs and not artistic works;
iii) The Indian Patent and Designs Office has confirmed vide its letter-dated 19.07.2002 that the subject designs being textile designs are registrable under the Designs Act, 2000.
The defendants also alleged that the plaintiff is guilty of suppressio veri and suggestio falsi i.e. the plaintiff failed to disclose the prior litigation including criminal proceedings where investigation officer had submitted a report to the court clearly stating that no case under the copyright law had been made out.
In the conspectus of the aforesaid position, the eight issues were framed. We will restrict ourselves only to the relevant ones, which are -
1. Whether there is any Copyright in the stated artistic work of the plaintiff.
2. Whether any Copyright subsists in favour of the plaintiff in view of the provisions of Section 15 of the Copyright Act.
The plaintiff placed reliance upon the Berne Convention for protection of literary and artistic works. The plaintiff state that as per Article 16(a) of the Convention protection exists automatically and there is no registration required in India in view of India being a signatory to Berne Convention, the Universal Copyright Convention, 1971 and the International Copyright Order 1999 being promulgated.
The defendants emphasized that the crucial question to be considered would be whether the subject work in question is an 'artistic work' protected under the provisions of the Copyright Act or a 'design' under the Designs Act, 2000 (or the Designs Act, 1911). The defendants contended that the subject work in dispute is floral designs, which are applied upon fabrics used for upholstery through an industrial process. This is the reason why in United Kingdom the plaintiff has registered the subject work as a design. A practical proof of this is stated to be the letter dated 19.07.2002 issued by the Patent Office to the effect that 'textile design fabrics' are registrable under the Designs Act, 2000.
The defendants contended that the legislative intent behind the repealed Designs Act, 1911 and coming into force of the new Designs Act, 2000 remained the same and the exclusion of 'artistic work' in the definition in the new Designs Act, 2000 is only clarificatory and was intended to exclude only artistic work pure and simple such as paintings, sculptures and works of art.
The court held that in order for the work of the plaintiff to qualify as 'artistic work', it must fall within the definition of Sub-section (c) of Section 2 of the Copyright Act. A reading of the said provision would show that attempt of the plaintiff can only be to bring it within the concept of 'painting'.
The court observed that “there is no doubt that labour has been put and there is some innovativeness applied to put a particular configuration in place. Such configuration is of the motifs and designs which by themselves would not be original. The originality is being claimed on the basis of the arrangement made. What cannot be lost sight of is the very object with which such arrangements or works had been made. The object is to put them to industrial use. An industrial process has to be done to apply the work or configuration to the textile. It is not something which has to be framed and put on the wall or would have any utility by itself. The two important aspects are the object with which it is made (which is industrial) and its inability to stand by itself as a piece of art. In fact, it has no independent existence of itself.”
The court further held that In India there are special legislations governing the protection of different nature of rights. For instance the industrial designs the protection is provided under the Designs Act, 2000 and the now repealed Designs Act, 1911.
The court observed “An important and relevant aspect is that both under the old Act and the new Act, fabric designs on textile goods have been classified as proper subject matter of design protection by inclusion as a specific class in the Rules framed under the Acts. In the Designs Act of 1911, class 13 and 14 of the Fourth Schedule of the Rules dealt with printed or woven designs of textile goods other than checks and stripes and checks and stripes respectively. Such protection is now provided under Class 05 of the new Design Rules of 2001. Furthermore, the legislative intent is also to be kept in mind which is to provide protection for a certain period of time for commercial exploitation.”
Therefore nature of protection is quite different for an artistic work under the Copyright Act which is for the lifetime of the author / creator + 60 years. This is not so in the case of commercial exploitation as under the Designs Act and the Patent Act the period is much lesser. In the present case, the configuration was made only with the object of putting it to industrial / commercial use.
The exclusion of an 'artistic work' as defined in Section 2(c) of the Copyright Act from the definition of 'design' under Section 2(d) of the Designs Act, 2000 is only meant to exclude the nature of artistic works like painting of M.F. Hussain. It is, thus, the paintings, sculptors and such works of art which are sought to be specifically excluded from the new Act.
Thus, the intention of the legislature has been expressed as one to protect any artistic work which has to be commercially exploited by the owner of the copyright by not providing the protection under the Copyright Act, but under the earlier the Designs Act, 1911.
“To this extent, I see no difference between the intent under the old Act and the new Act. A perusal of the Statement of Objects and Reasons for introduction of the new Act, the handouts issued by the Design Office and the registrations made of textile fabrics both under the old Act and the new Act leave little manner of doubt that the protection for such configurations, designs or works (by whichever name it may be called) is provided under the Designs Act. It is, thus, apparently clear that in the context of the Indian Law, it is the Design Act of 1911 or 2000, which would give protection to the plaintiff and not the Copyright Act.
The application of mind and skill is not being denied nor the fact that the defendants have copied the same, but that would still not amount to the works in question being labeled as 'artistic work' within the definition of Section 2(c) of the Copyright Act and, thus, the protection is not available under the Copyright Act. Issue No. 1 is answered accordingly.”
As regards the second issue arising from the provisions of Section 15 of the Copyright Act. The Section provides that copyright subsists under the Copyright Act in any design, which is registered under the Designs Act, 1911 and in case a design is capable of being registered under the Designs Act, 1911, the copyright shall cease as long as any article to which the design has been applied has been reproduced more than 50 times by an industrial process by the owner of the copyright or his licensee.
The court held that the patterns and designs of the plaintiff were capable of registration both under the old Designs Act and the new Designs Act and the plaintiff failed to do so with the result that the protection is not available to the plaintiff, which would have arisen if they had been so registered.
The suit was accordingly dismissed in favour of the defendants.
Friday, September 29, 2006
Storm in the Cup of Tea – Geographical Indication
The trademark DARJEELING NOUVEAU in relation to “tea” falling in class 30 has been refused registration by the US Patent and Trademark Office's Trademark Trial and Appeal Board (Board).
The opposition primarily involved the presence of DARJEELING in the mark DARJEELING NOUVEAU applied by The Republic of Tea Inc. Tea Board of India filed the opposition on May 1, 2000.
It is an interesting case because while The Republic of Tea Inc had disclaimed DARJEELING in the mark DARJEELING NOUVEAU, the Board held that that DARJEELING in the mark DARJEELING NOUVEAU was similar to the certification mark DARJEELING.
As a counter attack The Republic of Tea Inc had moved to cancel the certification mark DARJEELING. The Board office dismissed this action of The Republic of Tea Inc.
Interestingly The Republic of Tea Inc also happens to be one of the licensees of Tea Board's DARJEELING mark.
The Board held that there is bound to be confusion because of interalia similarity in sound, appearance and overall impression. Merely by disclaiming the word DARJEELING does not mean that there will be no confusion as the disclaimer also forms the part of the trademark and cannot be forgotten. The Board further held that there are no other distinguishing elements in the mark except DARJEELING.
The Board also held that DARJEELING is geographical source indicator in relation to tea.
The recognition of DARJEELING as a geographical indication and a certification mark by the US Tribunals and stopping one of its own companies to register a trademark comprising the word DARJEELING is a significant step forward in protection of geographical and traditional wealth of India. This development augurs well for the developing Indian industry and will have global ramifications.
The opposition primarily involved the presence of DARJEELING in the mark DARJEELING NOUVEAU applied by The Republic of Tea Inc. Tea Board of India filed the opposition on May 1, 2000.
It is an interesting case because while The Republic of Tea Inc had disclaimed DARJEELING in the mark DARJEELING NOUVEAU, the Board held that that DARJEELING in the mark DARJEELING NOUVEAU was similar to the certification mark DARJEELING.
As a counter attack The Republic of Tea Inc had moved to cancel the certification mark DARJEELING. The Board office dismissed this action of The Republic of Tea Inc.
Interestingly The Republic of Tea Inc also happens to be one of the licensees of Tea Board's DARJEELING mark.
The Board held that there is bound to be confusion because of interalia similarity in sound, appearance and overall impression. Merely by disclaiming the word DARJEELING does not mean that there will be no confusion as the disclaimer also forms the part of the trademark and cannot be forgotten. The Board further held that there are no other distinguishing elements in the mark except DARJEELING.
The Board also held that DARJEELING is geographical source indicator in relation to tea.
The recognition of DARJEELING as a geographical indication and a certification mark by the US Tribunals and stopping one of its own companies to register a trademark comprising the word DARJEELING is a significant step forward in protection of geographical and traditional wealth of India. This development augurs well for the developing Indian industry and will have global ramifications.
Wednesday, September 27, 2006
“Pioneer”ing Plasma v. Samsun(g)-who is the winner?
It appears Japanese electronics companies are in the bid to defend their territory from their Asian cousins are suing their cousins.
One such situation is where Pioneer Corporation, Japan has sued its Asian cousin Korean based electronic giant Samsung and its subsidiaries with U.S. District Court for the Eastern District of Texas in relation to patent infringement after apparently the talks between Pioneer and Samsung fell through.
Pioneer has claimed that Samsung has infringed its patents related to plasma display panel technology used primarily in television sets.
Pioneer holds a patent regarding an electrode configuration that improves plasma display quality, as well as a patent covering a manufacturing step that increases the brightness of the display.
According to Pioneer Samsung is violating both of those patents.
In the suit Pioneer is seeking the court to halt the sales of Samsung plasma displays in addition to compensation for past infringement.
According to Pioneer, Pioneer and Samsung had been negotiating in “good faith” to license the Plasma Display patent portfolio since April 2005. As the negotiations fell through, as per Pioneer litigation was necessary in order to protect the value of its intellectual property in the plasma display panels field.
Samsung obviously disagrees with Pioneer and plans to file a counter-suit against Pioneer.
Japanese electronic companies have in the past sued their Asian rival over both DRAM memory and LCD display technology. For instance in another patent infringement LG and Matsushita had locked horns over similar plasma patent. This was eventually settled in April 2005 by signing a cross-licensing agreement.
It appears this fight is for controlling the ever-increasing panel plasma market as plasma panels are the key component in plasma televisions. For instance as per a market research firm, the market for plasma televisions would nearly double to $28 billion by the year 2010.
Since the parties involved are giants, the only possible solution would be that of quid pro quo approach or in other word there would be licensing and cross licensing involved as none of the parties would want to loose their market share and would wish to have a hand in the plasma pie. By joining hand these giants would also prevent any third party to enter the fray.
As for the outcome of the battle between Pioneer and Samsung only time will tell how the matter is solved
One such situation is where Pioneer Corporation, Japan has sued its Asian cousin Korean based electronic giant Samsung and its subsidiaries with U.S. District Court for the Eastern District of Texas in relation to patent infringement after apparently the talks between Pioneer and Samsung fell through.
Pioneer has claimed that Samsung has infringed its patents related to plasma display panel technology used primarily in television sets.
Pioneer holds a patent regarding an electrode configuration that improves plasma display quality, as well as a patent covering a manufacturing step that increases the brightness of the display.
According to Pioneer Samsung is violating both of those patents.
In the suit Pioneer is seeking the court to halt the sales of Samsung plasma displays in addition to compensation for past infringement.
According to Pioneer, Pioneer and Samsung had been negotiating in “good faith” to license the Plasma Display patent portfolio since April 2005. As the negotiations fell through, as per Pioneer litigation was necessary in order to protect the value of its intellectual property in the plasma display panels field.
Samsung obviously disagrees with Pioneer and plans to file a counter-suit against Pioneer.
Japanese electronic companies have in the past sued their Asian rival over both DRAM memory and LCD display technology. For instance in another patent infringement LG and Matsushita had locked horns over similar plasma patent. This was eventually settled in April 2005 by signing a cross-licensing agreement.
It appears this fight is for controlling the ever-increasing panel plasma market as plasma panels are the key component in plasma televisions. For instance as per a market research firm, the market for plasma televisions would nearly double to $28 billion by the year 2010.
Since the parties involved are giants, the only possible solution would be that of quid pro quo approach or in other word there would be licensing and cross licensing involved as none of the parties would want to loose their market share and would wish to have a hand in the plasma pie. By joining hand these giants would also prevent any third party to enter the fray.
As for the outcome of the battle between Pioneer and Samsung only time will tell how the matter is solved
Monday, September 25, 2006
Errors and Amendments –Indian Trade Marks Act
The question that is discussed in this article is if there is a typographical and / or a clerical error in a notice of opposition or a counter statement filed with Trade Marks Registry, then can such a typographical and / or a clerical error result in the notice of opposition or counter statement being dismissed. Briefly is also discussed the effect of amendment in a notice of opposition or a counter statement.
To understand the proposition it is important the relevant section of Indian Trade Marks Registry be read and interpretation be drawn from the same.
Section 21 (7) of the Trade Marks Act, the relevant section, reads- “The Registrar, may on request, permit correction of any error in, or any amendment of, a notice of opposition or a counter statement on such terms as he thinks just”.
Thus Section 21 (7) of the Act is wide enough to encompass even amendments to the notice of opposition and counters statements leave alone errors.
“Errors” are of lower degree as compared to “amendments”. Errors envisage minor typographical and clerical mistakes and when these corrections are carried out, the same do not in any manner effect the right of the opponent or the applicant by decreasing or increasing the rights.
A typographical / clerical error cannot be taken as a basis for the notice of opposition or a counter statement as void. It is emphasized here that what has to be seen is if the opposition / counter statement is in pith and substance against the concerned application, then a mere typographical or clerical error cannot become a basis for rejection of the notice of opposition.
Thus the Learned Registrar of Trade Marks has ample powers to allow amendments of the notice of opposition including the introduction of new ground.
In this regard an interesting case is the case of Aminchand & Sons vs. Sohan Lal Bassan & Bros FAO No. 84 of 1970. Briefly the opponents at the stage of filing evidence in support of the opposition sought leave to amend the notice of opposition by introducing new ground of opposition. The Assistance Registrar refused permission to amend the notice of opposition on the ground that the Act contemplated only amendments in the nature of clerical error or some mistake on the face of record or an amendment to bring on record a subsequent change in the proprietorship of the trademark and not an amendment to introduce a new or fresh ground of objection.
The opponents appealed to the High Court at Delhi. High Court held allowing the appeal that –
(a) Registrar had ample powers to allow amendment of notice of opposition including introduction of new ground of opposition;
(b) That said power was not confined to correction of an error or an occurrence of any subsequent event;
(c) That the said powers were wide and must be construed liberally; and
(d) That the registrar had nevertheless a discretion to allow or not allow an amendment
Therefore the law is well settled in this quarter as regards the correction of typographical / clerical errors in the notice of opposition.
The catch lies in the fact that after all the discussions and debates the Court has left the discretion of Registrar to allow the amendment. Therefore all that can be said at the moment is that depending upon the facts and circumstance, the amendment of the notice of opposition may be allowed. So for instance if a new ground - which is not the change of name of the applicant or the opponent- is of such a material nature, like a ground which would never have arisen till happening of some events, then the same may be allowed.
To understand the proposition it is important the relevant section of Indian Trade Marks Registry be read and interpretation be drawn from the same.
Section 21 (7) of the Trade Marks Act, the relevant section, reads- “The Registrar, may on request, permit correction of any error in, or any amendment of, a notice of opposition or a counter statement on such terms as he thinks just”.
Thus Section 21 (7) of the Act is wide enough to encompass even amendments to the notice of opposition and counters statements leave alone errors.
“Errors” are of lower degree as compared to “amendments”. Errors envisage minor typographical and clerical mistakes and when these corrections are carried out, the same do not in any manner effect the right of the opponent or the applicant by decreasing or increasing the rights.
A typographical / clerical error cannot be taken as a basis for the notice of opposition or a counter statement as void. It is emphasized here that what has to be seen is if the opposition / counter statement is in pith and substance against the concerned application, then a mere typographical or clerical error cannot become a basis for rejection of the notice of opposition.
Thus the Learned Registrar of Trade Marks has ample powers to allow amendments of the notice of opposition including the introduction of new ground.
In this regard an interesting case is the case of Aminchand & Sons vs. Sohan Lal Bassan & Bros FAO No. 84 of 1970. Briefly the opponents at the stage of filing evidence in support of the opposition sought leave to amend the notice of opposition by introducing new ground of opposition. The Assistance Registrar refused permission to amend the notice of opposition on the ground that the Act contemplated only amendments in the nature of clerical error or some mistake on the face of record or an amendment to bring on record a subsequent change in the proprietorship of the trademark and not an amendment to introduce a new or fresh ground of objection.
The opponents appealed to the High Court at Delhi. High Court held allowing the appeal that –
(a) Registrar had ample powers to allow amendment of notice of opposition including introduction of new ground of opposition;
(b) That said power was not confined to correction of an error or an occurrence of any subsequent event;
(c) That the said powers were wide and must be construed liberally; and
(d) That the registrar had nevertheless a discretion to allow or not allow an amendment
Therefore the law is well settled in this quarter as regards the correction of typographical / clerical errors in the notice of opposition.
The catch lies in the fact that after all the discussions and debates the Court has left the discretion of Registrar to allow the amendment. Therefore all that can be said at the moment is that depending upon the facts and circumstance, the amendment of the notice of opposition may be allowed. So for instance if a new ground - which is not the change of name of the applicant or the opponent- is of such a material nature, like a ground which would never have arisen till happening of some events, then the same may be allowed.
Tuesday, September 19, 2006
Forting FORT WILLIAM
In another victory for Scotch Whisky Association (SWA) Indian Trade Marks Registry refused registration for the mark FORT WILLIAM (Label) for whisky.
In this interesting case the applicant claimed that it had use for the mark FORT WILLIAM for a long time and FORT WILLIAM was a historical landmark in Kolkata, therefore SWA cannot have any claim over the word FORT WILLIAM as being evocative of Scotland.
SWA submitted that FORT WILLIAM was a famous tourist location in Scotland. SWA further stated that FORT WILLIAM is also the site for the tallest mountain of Scotland- Ben Nevis. Furthermore Fort William was located in the Highlands, an area famous for Scotch Whisky Breweries and distillers. SWA also claimed that Fort William was know for its own distillery called Ben Nevis (Fort William) Limited and its Scotch Whisky called DEW OF BEN NEVIS. In support of its submissions, SWA provided numerous documents.
The registrar while refusing registration to the application for FORT WILLIAM held that FORT WILLIAM is a famous town in Scotland which is known for Scotch Whisky. Therefore the application for FORT WILLIAM (Label) by the applicant would in all likelihood cause confusion and deception and therefore the mark cannot granted registration.
In this interesting case the applicant claimed that it had use for the mark FORT WILLIAM for a long time and FORT WILLIAM was a historical landmark in Kolkata, therefore SWA cannot have any claim over the word FORT WILLIAM as being evocative of Scotland.
SWA submitted that FORT WILLIAM was a famous tourist location in Scotland. SWA further stated that FORT WILLIAM is also the site for the tallest mountain of Scotland- Ben Nevis. Furthermore Fort William was located in the Highlands, an area famous for Scotch Whisky Breweries and distillers. SWA also claimed that Fort William was know for its own distillery called Ben Nevis (Fort William) Limited and its Scotch Whisky called DEW OF BEN NEVIS. In support of its submissions, SWA provided numerous documents.
The registrar while refusing registration to the application for FORT WILLIAM held that FORT WILLIAM is a famous town in Scotland which is known for Scotch Whisky. Therefore the application for FORT WILLIAM (Label) by the applicant would in all likelihood cause confusion and deception and therefore the mark cannot granted registration.
Monday, September 11, 2006
Indian Trade Marks Act - Extension of time to lead evidence
In the past during the time when Trade and Merchandise Marks 1956 was in force, an opponent or / and an applicant could lead evidence as and when they desired. In other words the Registrar of Trade marks never imposed any condition to the grant of extension. The Result- the time period of deciding the opposition period was anywhere between 4 to 5 years and this is a conservative estimate.
With the passage of new Trade Marks Act of 1999 wef September 15, 2003, the time period to lead evidence was reduced to two months extendible at the most by one month calculated from the date of from the service of the notice of opposition or the services of evidence by the opponent on the applicant. Therefore maximum time of three months has been given to the opponent and applicant to lead their respective evidences in support of their submissions.
The immediate effect of this limitation to lead evidence was that the opposition proceedings have started to move faster and more and more oppositions have been appointed for final hearing in the past 3 years. Therefore it does seem that the limitation has its desired effect and of course the eagerness of lawyers and the Registrars to finish the matter has been contributory in the progress.
While this is a welcome change, there appears to one lacuna in the Trade Marks Act pertaining to seeking extension for the additional one month. The Section reads that the request for extension for a period of one month has to be filed “before” the expiry of two months.
This has led to several heartburns and problems as the lawyers depending upon which sides they are take up the plea for and against the grant of extension. Essentially the argument boils to that of Statute vs. the classic trilogy of justice, equity and good conscience.
From the point of view of statute, which if read as it is, clearly bars the filing of the evidence or refusal of the grant of extension by the Registrar. At the same time we cannot ignore the fact that if it is possible to decide a matter on merits and if the Act provides reasonable limits, then justice, equity and good conscience must prevail.
Accordingly I would say that the extension must be allowed even if the request for extension has been filed subsequent to two months. In fact to this extent the Trade Marks Act, gives discretionary powers to the Registrar whereby if the Registrar feels that a matter deserves to be granted extension then the same can be allowed.
End of the day one has to see if the Statute is meting out justice in the correct form, not by strictly following letters without the spirit. Harmonious construction of the Section is required and not strict interpretation to enjoy the benefit of the Act in letter and spirit
While this debate carries on, to draw parallel one requires to see how the Courts and Appellate Board have been treating the concept of leading evidence, even beyond the statutory three months period.
Once again strictly going by the book, the Trade Marks Act in India does not allow for an extension beyond 3 months.
At the same time in the interest of justice, equity and good conscience the Registrar should generally allows the evidence filed subsequent to the due date.
Here attention is drawn to a recent case of Asian Paints Limited v. Registrar of Trade Marks 2005(30) PTC 444 (IPAB), wherein in an appeal before the Intellectual Property Appellate Board it has been held that the Registrar enjoys the powers to extend the time for filing evidence even beyond the three month stipulated deadline.
In this interesting case it was held that the filing of evidence under the new Trade Marks Act has undergone changes of fundamental character. However the settled proposition of law is that the provisions of subordinate legislation have to be in conformity with provisions of principal legislation. It was also held that the society has vital interest in maintaining the purity of Register and for that matter should get to know the grounds for claiming the registration of the mark.
The decision in this case flowed from previous precedents and more importantly from the full Bench Judgment of Hastimal Jain v. Registrar of Trade Marks 2000 PTC 24 Del. In this judgment the court held that the extension-providing Rule in Trade Marks Act is directory, not mandatory. Therefore a direct interpretation of this is that the Registrar of Trade Marks is not under a mandate to deem the opposition as abandoned. In suitable cases, the Registrar can grant of extension for filing evidence in opposition.
From the above discussion, therefore it appears that grant of extension are directory and not mandatory. In those cases which merit extension, the extension should be given even if the request for extension is time barred.
The above decisions, I would say, are very good decisions as they take into account the not only the letter but also the spirit of law. After all what is the point of providing provisions for extensions in the system and then not allow because of a mere delay. A request for extension should be allowed to be filed at any time and such a request should be allowed as long as it is within the maximum period prescribed by the Act.
Of course there will be cases where extension are sought after the expiry of maximum limitation as prescribed, but these can be addressed upon the merits of each case and Registrar’s discretionary powers would also come in fore.
After all the decision of the opposition would effect the fate of a business and we do not want that due to technical reasons, a business comes to standstill. While malpractices have to discouraged, a reasonable explanation for filing an extension or a request for extension should be entertained.
In this backdrop I have following suggestions-
1. Request for extension should be duly supported with plausible explanation;
2. The Registrar has to use his discretion not in a technical manner, but in the manner that is consistent with principles of justice, equity and good conscience
3. Lawyers need to calm down and not make a fuss about the technical ground, which drags the matter even further
4. One of the places where an amendment is required in The Trade Marks, 1999 is the area of extensions.
Therefore for me justice, equity and good conscience prevails over the statute.
Vaibhav Vutts
Copyright 2006
These are the views of the author and are not to be taken as legal advice.
With the passage of new Trade Marks Act of 1999 wef September 15, 2003, the time period to lead evidence was reduced to two months extendible at the most by one month calculated from the date of from the service of the notice of opposition or the services of evidence by the opponent on the applicant. Therefore maximum time of three months has been given to the opponent and applicant to lead their respective evidences in support of their submissions.
The immediate effect of this limitation to lead evidence was that the opposition proceedings have started to move faster and more and more oppositions have been appointed for final hearing in the past 3 years. Therefore it does seem that the limitation has its desired effect and of course the eagerness of lawyers and the Registrars to finish the matter has been contributory in the progress.
While this is a welcome change, there appears to one lacuna in the Trade Marks Act pertaining to seeking extension for the additional one month. The Section reads that the request for extension for a period of one month has to be filed “before” the expiry of two months.
This has led to several heartburns and problems as the lawyers depending upon which sides they are take up the plea for and against the grant of extension. Essentially the argument boils to that of Statute vs. the classic trilogy of justice, equity and good conscience.
From the point of view of statute, which if read as it is, clearly bars the filing of the evidence or refusal of the grant of extension by the Registrar. At the same time we cannot ignore the fact that if it is possible to decide a matter on merits and if the Act provides reasonable limits, then justice, equity and good conscience must prevail.
Accordingly I would say that the extension must be allowed even if the request for extension has been filed subsequent to two months. In fact to this extent the Trade Marks Act, gives discretionary powers to the Registrar whereby if the Registrar feels that a matter deserves to be granted extension then the same can be allowed.
End of the day one has to see if the Statute is meting out justice in the correct form, not by strictly following letters without the spirit. Harmonious construction of the Section is required and not strict interpretation to enjoy the benefit of the Act in letter and spirit
While this debate carries on, to draw parallel one requires to see how the Courts and Appellate Board have been treating the concept of leading evidence, even beyond the statutory three months period.
Once again strictly going by the book, the Trade Marks Act in India does not allow for an extension beyond 3 months.
At the same time in the interest of justice, equity and good conscience the Registrar should generally allows the evidence filed subsequent to the due date.
Here attention is drawn to a recent case of Asian Paints Limited v. Registrar of Trade Marks 2005(30) PTC 444 (IPAB), wherein in an appeal before the Intellectual Property Appellate Board it has been held that the Registrar enjoys the powers to extend the time for filing evidence even beyond the three month stipulated deadline.
In this interesting case it was held that the filing of evidence under the new Trade Marks Act has undergone changes of fundamental character. However the settled proposition of law is that the provisions of subordinate legislation have to be in conformity with provisions of principal legislation. It was also held that the society has vital interest in maintaining the purity of Register and for that matter should get to know the grounds for claiming the registration of the mark.
The decision in this case flowed from previous precedents and more importantly from the full Bench Judgment of Hastimal Jain v. Registrar of Trade Marks 2000 PTC 24 Del. In this judgment the court held that the extension-providing Rule in Trade Marks Act is directory, not mandatory. Therefore a direct interpretation of this is that the Registrar of Trade Marks is not under a mandate to deem the opposition as abandoned. In suitable cases, the Registrar can grant of extension for filing evidence in opposition.
From the above discussion, therefore it appears that grant of extension are directory and not mandatory. In those cases which merit extension, the extension should be given even if the request for extension is time barred.
The above decisions, I would say, are very good decisions as they take into account the not only the letter but also the spirit of law. After all what is the point of providing provisions for extensions in the system and then not allow because of a mere delay. A request for extension should be allowed to be filed at any time and such a request should be allowed as long as it is within the maximum period prescribed by the Act.
Of course there will be cases where extension are sought after the expiry of maximum limitation as prescribed, but these can be addressed upon the merits of each case and Registrar’s discretionary powers would also come in fore.
After all the decision of the opposition would effect the fate of a business and we do not want that due to technical reasons, a business comes to standstill. While malpractices have to discouraged, a reasonable explanation for filing an extension or a request for extension should be entertained.
In this backdrop I have following suggestions-
1. Request for extension should be duly supported with plausible explanation;
2. The Registrar has to use his discretion not in a technical manner, but in the manner that is consistent with principles of justice, equity and good conscience
3. Lawyers need to calm down and not make a fuss about the technical ground, which drags the matter even further
4. One of the places where an amendment is required in The Trade Marks, 1999 is the area of extensions.
Therefore for me justice, equity and good conscience prevails over the statute.
Vaibhav Vutts
Copyright 2006
These are the views of the author and are not to be taken as legal advice.
Friday, September 08, 2006
Should India allow data exclusivity, or just stick to data protection?
An interesting article on date exclusivity pulished in September 2006 issue of Business World by Gina S. Krishnan. Read on
Patently Contentious
Should India allow data exclusivity, or just stick to data protection?
GINA S. KRISHNAN
Interest groups are into their last round of hectic lobbying before the Satwant Reddy panel set up by the government decides on 6 September whether India should adopt data protection or data exclusivity in its patents regime under TRIPS Article 39.3. Reddy is the secretary, Ministry of Chemicals and Fertilisers.
The battle lines are clearly drawn between the lobby of innovator companies, mostly multinationals, and that of generics companies, largely Indian. They range from the Indian Pharmaceutical Alliance (IPA), Indian Drug Manufacturers Association (IDMA), and the Organisation of Pharmaceutical Producers of India (OPPI, representing the MNC lobby), US pharma lobby PhRMA, to individual companies, interest groups and NGOs.
“According to TRIPS, India needs to ensure protection of data during the life of the patent. There’s no clause which restricts the exclusivity of use of innovators data beyond the life of the patent,” says D.G. Shah, secretary general, IPA.
It is vital to innovators that India goes for data exclusivity because that would allow them to make it difficult for generics companies to make and sell a drug profitably even after the patent on it has expired. Generics companies, however, contend that such a regime would allow innovator companies to extend patent life beyond 20 years.
The price fall after patent expiry, as seen in the US, has been anywhere between 40 per cent and 80 per cent, depending on the size of the market and the number of companies that want to enter with generics. With the number of blockbuster innovator drugs coming to the market falling off in recent times, MNCs want to milk drugs they have discovered even after their patents expire.
As a member of the World Trade Organisation (WTO), India allows data protection. Patents are filed on a new chemical entity (NCE), or molecule, after it shows possibilities of developing into a usable drug. Thereafter, it has to go through development and trials and may, finally, get marketing approval, often more than a decade after the patent is filed. Data protection ensures that no other company can use the data generated to prove the usability of the drug during this period. Exclusivity ensures that this data cannot be used by others for 3-5 years after the concerned drug gets marketing approval.
Companies take the marketing approval for a specific country when they want to launch a drug there. It may be staggered across countries, and, therefore, may be valid even if the patent has expired elsewhere. Says Ramesh Adige, executive director, Ranbaxy Laboratories: “We support data protection. It should apply only to NCEs. Under no circumstance should it exceed the life of the patent.”
WTO members are divided over data exclusivity. While China has adopted it, Brazil has not. Nor have about 62 other WTO countries. “Data exclusivity is becoming such a contentious issue as it is not about respecting intellectual property, but about marketing exclusivity,” says an Indian industry insider.
Data exclusivity could also be used to carry out additional studies on a molecule beyond the life of the patent. Exclusivity or patent term extension could be sought and granted for isomers, new uses of existing products, and pediatric use of an old product. This is possible in the US and EU, which allow exclusivity.
India has to balance the interests of innovator and generic firms, keeping spiralling healthcare costs in mind. After all, it has one of the strongest generics drug industries in the world.
Patently Contentious
Should India allow data exclusivity, or just stick to data protection?
GINA S. KRISHNAN
Interest groups are into their last round of hectic lobbying before the Satwant Reddy panel set up by the government decides on 6 September whether India should adopt data protection or data exclusivity in its patents regime under TRIPS Article 39.3. Reddy is the secretary, Ministry of Chemicals and Fertilisers.
The battle lines are clearly drawn between the lobby of innovator companies, mostly multinationals, and that of generics companies, largely Indian. They range from the Indian Pharmaceutical Alliance (IPA), Indian Drug Manufacturers Association (IDMA), and the Organisation of Pharmaceutical Producers of India (OPPI, representing the MNC lobby), US pharma lobby PhRMA, to individual companies, interest groups and NGOs.
“According to TRIPS, India needs to ensure protection of data during the life of the patent. There’s no clause which restricts the exclusivity of use of innovators data beyond the life of the patent,” says D.G. Shah, secretary general, IPA.
It is vital to innovators that India goes for data exclusivity because that would allow them to make it difficult for generics companies to make and sell a drug profitably even after the patent on it has expired. Generics companies, however, contend that such a regime would allow innovator companies to extend patent life beyond 20 years.
The price fall after patent expiry, as seen in the US, has been anywhere between 40 per cent and 80 per cent, depending on the size of the market and the number of companies that want to enter with generics. With the number of blockbuster innovator drugs coming to the market falling off in recent times, MNCs want to milk drugs they have discovered even after their patents expire.
As a member of the World Trade Organisation (WTO), India allows data protection. Patents are filed on a new chemical entity (NCE), or molecule, after it shows possibilities of developing into a usable drug. Thereafter, it has to go through development and trials and may, finally, get marketing approval, often more than a decade after the patent is filed. Data protection ensures that no other company can use the data generated to prove the usability of the drug during this period. Exclusivity ensures that this data cannot be used by others for 3-5 years after the concerned drug gets marketing approval.
Companies take the marketing approval for a specific country when they want to launch a drug there. It may be staggered across countries, and, therefore, may be valid even if the patent has expired elsewhere. Says Ramesh Adige, executive director, Ranbaxy Laboratories: “We support data protection. It should apply only to NCEs. Under no circumstance should it exceed the life of the patent.”
WTO members are divided over data exclusivity. While China has adopted it, Brazil has not. Nor have about 62 other WTO countries. “Data exclusivity is becoming such a contentious issue as it is not about respecting intellectual property, but about marketing exclusivity,” says an Indian industry insider.
Data exclusivity could also be used to carry out additional studies on a molecule beyond the life of the patent. Exclusivity or patent term extension could be sought and granted for isomers, new uses of existing products, and pediatric use of an old product. This is possible in the US and EU, which allow exclusivity.
India has to balance the interests of innovator and generic firms, keeping spiralling healthcare costs in mind. After all, it has one of the strongest generics drug industries in the world.
PATENT TUSSLE: Philips locks horns with T-Series
This interesting article which appeared in Economic Time on 30th August 2006 deals with a licensing issues. Though on the face of it, the issue seems more of breach of trust, but it seems that T-Series is also raised the issue of challenging some of the patents of Phillips. Read On!!-
MUMBAI: Consumer electronics heavyweight, Royal Philips Electronics of Netherlands, and Indian music major T-Series have locked horns over royalty payments and non-compliance issues for a couple of patent license agreements.
The companies had signed the patent agreements for VCDs and CDs in ’03 and for DVD players & DVD-ROM players in November ’05. While Philips Netherlands has charged T-series of non-payment of royalty on all the three, Super Cassettes Industries, which owns the T-Series brand, is planning to petition the Delhi High Court.
T-Series will challenge Philips’s patent rights for some of the components being used. When contacted by ET, Philips officials said, “The major conflict with Super Cassettes is over a patent agreement for DVDs signed by one of their executive directors in November ’05. Sometime in December ’05-January ’06, they requested us to return our copy of the agreements stating that it needed to be countersigned by their managing director. In all fairness, we returned our copy to them, requesting them to return it after having it countersigned by their MD.
Instead of the agreement, we received a lawyer’s notice in March’ 06 denying that the agreement was ever signed. “Subsequently, they returned our copy of the agreements after cancelling the signatures. We have all documentary proof in writing to prove that the documents have been signed by Super Cassettes,” he pointed out.
Super Cassettes officials refrained from offering any official comments despite repeated attempts by ET. “Not all the components being used by Philips are novel. Some of them are in the general category. Yet Philips is taking royalties for them,” a top official from Super Cassettes said on condition of anonymity.
Philips Electronics, NV, Sony, Pioneer and LG Electronics have started a joint patent license programme which covers essential patents for DVD-Video and DVD-ROM. Philips and their partners in these license programmes own a number of patents and have a number of patent applications pending relevant to DVD systems, which are licensed by Philips to DVD disc and player/recorder manufacturers.
By acquiring licenses from Philips under one of the DVD patent license programmes, manufacturers will be allowed to use the patents of Philips and their partners for the relevant DVD products.
Samsung currently imports its DVD requirements from its parent company in Korea who pays the royalty. LG imports partially from Korea and also sources it locally in India for which it pays royalty to Philips Netherlands.
Super Cassettes now has TVs, DVDs and VCDs in its product portfolio. The DVD market totals about 4m units with Philips claiming to be the brand leader, with 21% share followed by Onida and LG. Much of the market is also taken up by regional brands.
Source- Economic times -KALA VIJAYRAGHAVAN AND RASHMI PRATAP TIMES NEWS NETWORK
[ WEDNESDAY, AUGUST 30, 2006 01:26:41 AM]
[ WEDNESDAY, AUGUST 30, 2006 01:26:41 AM]
No approval is required from RBI now for remittances for the use and purchase of trademark
In the past, as per Foreign Exchange Management (Current Account Transactions) Rules, 2000, there was a requirement of RBI’s prior approval for remittances towards purchase of trademark and franchise.
With effect from 10th July 2006 in a Notification issued by the Foreign Exchange Department of the RBI it has been stated that no approval is required from now on for remittances for the use and purchase of trademark
The notification states as below-
"In the Foreign Exchange Management (Current Account Transactions) Rules, 2000, in Schedule III, item number 16 and the entry relating thereto shall be omitted."
This change is definitely good for foreign companies that are investing in India as it further eases the entry of foreign companies in India
With effect from 10th July 2006 in a Notification issued by the Foreign Exchange Department of the RBI it has been stated that no approval is required from now on for remittances for the use and purchase of trademark
The notification states as below-
"In the Foreign Exchange Management (Current Account Transactions) Rules, 2000, in Schedule III, item number 16 and the entry relating thereto shall be omitted."
This change is definitely good for foreign companies that are investing in India as it further eases the entry of foreign companies in India
Wednesday, September 06, 2006
BLENDERS PRIDE
This is a very interseting article I got from the online edition of the newsletter of K& S Partners. Thought i should blog it. So read on-
Can the first user of a mark internationally supersede the first user in India?
This was the main issue that fell for consideration before the High Court of Delhi in Austin Nichols & Co. and Anr. Vs. Arvind Behl&Anr. (unreported – decided on November 29, 2005).
The mark involved in this case is ‘Blender’s Pride’ owned and used by the plaintiffs in respect of whisky manufactured worldwide by them since 1973. Thewhisky manufactured by the plaintiffs’ under the mark Blender’s Pride has sincebeen sold in over 50 countries and enjoys a tremendous reputation in India since the late 1980s and 1990s through foreign visitors, satellite channels and the internet.
The plaintiffs were unable to sell their whisky under the said mark in India until1995 due to the then prevailing policies of the Government of India. In 1995, theyapplied for registration of their mark in India.
The defendants, local manufacturers of alcoholic drinks, claimed that they have been selling their whisky under the trademark ‘Blender’s Pride’ since 1993-94 but temporarily discontinued production thereafter until 2004-05. The Action was instituted by the plaintiffs in February 2005 on the allegation that the defendants are passing off their whisky as that of the plaintiffs.
The main defence raised by the defendants was that they adopted the mark in India in 1993-94, which is prior to its adoption by the plaintiffs in India.
While deciding the case, the court raised two points: first, that by their own averments in the suit, the defendants are ‘one of the largest, most reputed and well-established manufacturers and distributors of liquor ’ ; this being so, how could they not have known of the presence or existence of the plaintiffs’ mark ‘Blender’s Pride’ in the international market.
Secondly, the plaintiffs have stated in the pleadings that they have held asmany as 20 promotional events for Blender’s Pride (the defendants have notdenied this statement) in India from January 2001 onwards; the defendants, being in the same business as that of the plain tiffs, should have been aware of this and should have taken appropriate steps to prevent the plaintiffs from exploiting the mark ‘Blender’s Pride’.
As regards the main defence raised by the defendants, the court went on to examine the effect of the plaintiffs being the first and perhaps the only manufacturers of ‘Blender’s Pride’ whisky internationally and the second in India. Having analysed the various precedents including the Milmet case decided by the Supreme Court of India, the court held that the plaintiffs having come out with the Blender’s Pride whisky first in the international market were first past the post even though the defendants were the first to do so in India. Further, a cost of Rs.18,850,000(approximately US$38,000) was awarded to the plain-tiffs as legal costs.
The judgment is a lesson to all those infringers who believe that foreign marksare up for grabs before the proprietor makes a physical entry into India.
© 2006 K&S Partners, New Delhi.
Can the first user of a mark internationally supersede the first user in India?
This was the main issue that fell for consideration before the High Court of Delhi in Austin Nichols & Co. and Anr. Vs. Arvind Behl&Anr. (unreported – decided on November 29, 2005).
The mark involved in this case is ‘Blender’s Pride’ owned and used by the plaintiffs in respect of whisky manufactured worldwide by them since 1973. Thewhisky manufactured by the plaintiffs’ under the mark Blender’s Pride has sincebeen sold in over 50 countries and enjoys a tremendous reputation in India since the late 1980s and 1990s through foreign visitors, satellite channels and the internet.
The plaintiffs were unable to sell their whisky under the said mark in India until1995 due to the then prevailing policies of the Government of India. In 1995, theyapplied for registration of their mark in India.
The defendants, local manufacturers of alcoholic drinks, claimed that they have been selling their whisky under the trademark ‘Blender’s Pride’ since 1993-94 but temporarily discontinued production thereafter until 2004-05. The Action was instituted by the plaintiffs in February 2005 on the allegation that the defendants are passing off their whisky as that of the plaintiffs.
The main defence raised by the defendants was that they adopted the mark in India in 1993-94, which is prior to its adoption by the plaintiffs in India.
While deciding the case, the court raised two points: first, that by their own averments in the suit, the defendants are ‘one of the largest, most reputed and well-established manufacturers and distributors of liquor ’ ; this being so, how could they not have known of the presence or existence of the plaintiffs’ mark ‘Blender’s Pride’ in the international market.
Secondly, the plaintiffs have stated in the pleadings that they have held asmany as 20 promotional events for Blender’s Pride (the defendants have notdenied this statement) in India from January 2001 onwards; the defendants, being in the same business as that of the plain tiffs, should have been aware of this and should have taken appropriate steps to prevent the plaintiffs from exploiting the mark ‘Blender’s Pride’.
As regards the main defence raised by the defendants, the court went on to examine the effect of the plaintiffs being the first and perhaps the only manufacturers of ‘Blender’s Pride’ whisky internationally and the second in India. Having analysed the various precedents including the Milmet case decided by the Supreme Court of India, the court held that the plaintiffs having come out with the Blender’s Pride whisky first in the international market were first past the post even though the defendants were the first to do so in India. Further, a cost of Rs.18,850,000(approximately US$38,000) was awarded to the plain-tiffs as legal costs.
The judgment is a lesson to all those infringers who believe that foreign marksare up for grabs before the proprietor makes a physical entry into India.
© 2006 K&S Partners, New Delhi.
SCOTCH is a Geographical Indication in India
This is another Scotch Whisky victory and this time a big one. Terms such as SCOTCH, SCOT, SCOT, SCOTTISH have bneen declared as Geographical Indications by the Courts. As i say Read On!!-
NEW DELHI: In a development that could jolt the burgeoning liquor industry, the Delhi High Court has held that the Indian whisky manufacturer cannot use the word “scot” or “scotch” in compliance with the WTO agreement.
In the first ruling in India relating to the protection of Geographical Indications (GIs) under the WTO-TRIPS agreement, Justice Madan B Lokur agreed that the words “scot” or “scotch” identify whiskey produced in Scotland and no domestic manufacturer can use them to market its liquor.
The judgement was delivered on a lawsuit filed by the Scotch whiskey association of UK seeking to restrain permanently, an Indian whiskey manufacturer from using the name “Red Scot” or any other name containing the word “scot” to sell its product.
While decreeing the suit ex-parte, the court directed Golden Bottling, operating from Delhi and Alwar in Rajasthan, to pay damages of Rs 5 lakh to the UK-based Scotch Association and its members for passing off its whiskey as scotch whiskey.
The court accepted the arguments of advocate Pravin Anand, an IPR expert, that under the WTO-TRIPS agreement, protection was provided for GIs, which identifies the good originating in the territory of a member or the goods which are essentially attributable to its geographical origin. “I am satisfied that the domestic manufacturer is liable to be restrained from passing off its ‘red scot’ whiskey as a produce of Scotland.
This can only be done by injuncting it from using the word ‘scot’ or any other word similar therto in the whiskey manufactured by it,” the judge said. The court added that since domestic manufacturers did not prefer to contest the lawsuit, it appears they were not averse to dropping the word ‘scot’
The suit was filed under the Geographical Indications of goods (registration and protection) Act, 1999, which was enacted as a result of the WTO-TRIPS agreement. Mr Anand had alleged that Golden Bottling was using the word “scot” to pass off its whiskey by giving an impression that it orginates in Scotland or that it was scotch whiskey.
The association had claimed damages contending that the reputation of scotch whiskey has been irreparably damaged by the use of word “scot” in whiskey manufactured by the domestic company.
Accepting arguments that the sale and manufacture of the whiskey were in violation of the new law, Justice Lokur said, “In view of the well settled law laid down by this court and reiterating the necessity of preventing a violation of IPR of parties, I think it would be appropriate, if the damages as prayed by the association to the extent of Rs 5 lakh are granted”. The court also directed Golden Bottling to pay Rs 3.1 lakh as litigation cost to the scotch whiskey association.
Source -Economic Times
Reported - MONDAY, APRIL 24, 2006 01:35:26 AM on Economic Times Website
US seeks Indian partnership in IPR protection
The below article is an indicator that there is bound to be growth in IP in India. what we have done till now is nothing compared to what is in store for us!! Read on-
BANGALORE: The United States on Wednesday May 17, 2006 urged India to join hands with it for Intellectual Property Rights protection.
"A thriving, diversified economy must protect its IPR. India and US which are partners in growth must be partners in IPR protection too," Christian Israel, US Coordinator for International IPR said while addressing the members of Bangalore Chamber of Industry and Commerce (BCIC) here.
"Intellectual property is a huge economic driver for the US. While US government spends nearly USD 135 billion on R & D activities related to healthcare, energy and security related fields, private sector invests USD 200 billion," Israel said.
Israel, who during his three-day visit met trade representatives and government officials in New Delhi said, "We are talking to different people on how India can be a partner in innovation, growth and in IP protection". "We are also inviting best possible patents from India. We learnt that India has prepared a traditional database comprising 157,000 items. We are in the process of forming a working group to address concerns regarding post patent", he said.
About apprehensions on awarding patents for traditional Indian products like Basmati rice and turmeric, Dominic Keating, US Attorney of Trademarks office based in New Delhi said, "a second patent has been sought in US for such products and it relates to conducting research and development of base products".
A lot of work can be done in the development of traditional products and IPR protection will help Indian industry as well, he said.
Source - Economics Times Online Edition PTI WEDNESDAY, MAY 17, 2006 08:20:41 PM
Tuesday, September 05, 2006
Ranbaxy wins on two additional Atorvastatin patents in Norway
This is an interesting IP development, especially for India. Read on-
Ranbaxy Laboratories Ltd has announced that a Norwegian court today handed down a favourable decision for the Company in its case against Pfizer, involving two patents on atorvastatin in Norway.
Atorvastatin is a cholesterol-lowering drug which is marketed by Pfizer as Lipitor®.The Oslo City Court sided with the Company by finding non-infringement of two of Pfizer´s Norwegian patents (No. 177,566 and No. 180,199) covering particular intermediate compounds.
Earlier in November 2005, the Norwegian Court had found the Company´s atorvastatin product not to infringe one of Pfizer´s process patents (No. 309,322) but to infringe another of Pfizer´s patents (No. 177,706) covering a particular intermediate compound.
The Company has already appealed to the Norwegian Court of Appeals against the negative judgment on the one remaining intermediate compound patent."This is a most important decision for Ranbaxy, as it significantly validates our position regarding the atorvastatin patents," said Jay Deshmukh, Senior Vice President, Global Intellectual Property for RLL.
"We will continue to actively pursue all of our options in Norway and other markets in order to bring affordable atorvastatin to patients around the world."
Source: Equity Bulls
I have taken this article from Equitybulls.com. so all rights over this article are reserved with Equity Bulls and this is merely for information and postoing on this blog
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