Friday, March 25, 2011

Snippets: Patent Manual Published

The Indian Patent Office (IPO) has published the 175-page Manual of Patent Office Practice and Procedure. We will shortly run posts on the contents of the Manual and we welcome thoughts from our readers on the manual.

Thursday, March 24, 2011

Section 39 of Patents Act: Resident in India

I have had discussions with quite a few practitioners on Section 39 of the Patents Act; there is a school of thought according to which, so long as the invention is conceptualized in India, Section 39 applies to the situation. Before I proceed further, here’s Section 39:

39. Residents not to apply for patents outside India without prior permission.
1.  No person resident in India shall, except under the authority of a written permit granted by or on behalf of the Controller, make or cause to be made any application outside India for the grant of a patent for an invention unless

2.  an application for a patent for the same invention has been made in India, not less than six weeks before the application outside India; and

3. either no directions have been given under sub- section (1) of section 35 in relation to the application in India, or all such directions have been revoked.

4. The Controller shall not grant written permission to any person to make any application outside India without the prior consent of the Central Government.

5.  This section shall not apply in relation to an invention for which an application for protection has first been filed in a country outside India by a person resident outside India.

Sub-section (1) clearly requires only a person resident in India who makes or causes to make an application for patent outside India to:
A. either seek from the Controller written exemption from first filing for an application for patent in India: or
B. File an application for patent outside India only six weeks after filing one in India

For the first filing requirement of Section 39 to apply to an individual/entity, he or it must be a “resident in India”. The Patents Act does not define “resident in India”, but Section 6 of the Income Tax Act does; the portions of Section 6 of the Income Tax Act which are relevant for this post are as follows:

Section 6: For the purposes of this Act,-
 (1) An individual is said to be resident in India in any previous year, if he - (a) Is in India in that year for a period or periods amounting in all to one hundred and eighty-two days or more; or

(c) Having within the four years preceding that year been in India for a period or periods amounting in all to three hundred and sixty-five days or more, is in India for a period or periods amounting in all to sixty days or more in that year.

(b) Being a citizen of India, or a person of Indian origin within the meaning of Explanation to clause (e) of section 115C, who, being outside India, comes on a visit to India in any previous year, the provisions of sub-clause (c) shall apply in relation to that year as if for the words "sixty days", occurring therein, the words "one hundred eighty-two days" had been substituted.

(3) A company is said to be resident in India in any previous year, if – 
(i) It is an Indian company; or
 (ii) During that year, the control and management of its affairs is situated wholly in India.

(4) Every other person is said to be resident in India in any previous year in every case, except where during that year the control and management of his affairs is situated wholly outside India.

If a person does not qualify as “resident in India” within the meaning of Section 6, I am not sure Section 39 applies to him. Further, Section 39 does not apply to all residents in India, it applies only to those residents who make or cause to make an application for a patent outside India.

Broken down into simple terms, Section 39 applies only to those residents who have the power to decide whether or not to apply for a patent outside India. In short, it applies only to applicants/assignees, but does not seem to apply to inventors.

It seems a stretch of an argument to contend that even an inventor in India could be considered as “causing to make an application”. Participating in the act of creating the invention is different from taking a decision to apply for a patent. 

An inventor, in most situations, is simply not the person who can take a call on whether or not to apply for a patent. To apply or not to apply for a patent is the call of the assignee for whom the inventor works.

Even if the inventor is aware of the fact that the invention may ultimately become the subject-matter of a patent application, I don’t think he “causes to make the (patent) application”. He merely makes or causes to make the invention, which may or may not be the subject-matter of a patent application.

What does this translate to? If there is an invention which is the product of the efforts of an entity which is situated in India, but whose control and management is situated outside India, Section 39 does not seem to apply to such entity located in India, notwithstanding the fact that the invention is made in India or the inventors are Indians. This is so because the entity located in India is not a “resident in India”, according to Section 6 of the Income Tax Act.

It’s a wholly different issue that as practitioners, prudence tells us that it is better to err on the side of caution and hence file an Indian application (only to be abandoned later); but strictly speaking, if one had to take a call on pure legal grounds, however academic, Section 39 does not seem to require non-residents to seek written permission from the Controller or file an application for patent in India first.

It is possible that Section 39’s history may allude to a different line of thought. However, legislative intent may be deciphered and used from external aids of interpretation such as legislative debates or committee reports or history of the provision, only when there is an ambiguity in the provision on a plain reading of the provision, not when ambiguity is the product of uninformed or mis-informed “office practice”.

I would like to know the opinions of our better-informed readers.

Wednesday, March 23, 2011

Rules 137 and 138 of the Patent Rules: Where and Why is the Confusion?

Rules 137 and 138 of the Patent Rules, 2003 have been in the news thanks to a decision of the Madras High Court delivered in January this year. This decision has already been discussed elsewhere; that said, I think it needs a deeper reading because the Court doesn’t seem to have gone deep enough into the relevant provisions.

Let's discuss the provisions themselves to understand the flaw in the Court's approach.

Rule 137. Powers of Controller generally- Any document for the amendment of which no special provision is made in the Act may be amended and any irregularity in procedure which in the opinion of the Controller may be obviated without detriment to the interests of any person, may be corrected if the Controller thinks fit and upon such terms as he may direct.

Rule 138. Power to extend time prescribed- (1) Save as otherwise provided in the rules 24(B), sub-rule (4) of rule 55 and sub-rule (1A) of rule 80, the time prescribed by these rules for doing any act or the taking of any proceeding thereunder may be extended by the Controller for a period.

While Rule 137 refers to the Controller’s general powers with respect to any irregularity in procedure, Rule 138 specifically vests the Controller with power to extend time. In a way, Rule 137 can be compared to Section 151 of the Code of Civil procedure (CPC) which vests a Court with inherent procedural powers.

Similarly, Rule 138 can be compared to Section 148 of the CPC which deals with power to extend time. If this comparison is justified, the principle that has been conventionally and rightly applied with respect to Section 151 of the CPC is that the general/inherent powers cannot and must not be interpreted so as to militate the express word of the CPC.

In other words, a Court cannot employ its inherent powers under Section 151 to render nugatory any other express provision of the CPC (We have discussed this earlier on the blog).

Analogous application of Rule 137 of the Patent Rules too demands that Rule 137 cannot be employed to run counter to any other express provision of the Patents Act.

What is the specific consequence of this proposition with respect to Rule 138? Rule 138 states in no uncertain terms that for an applicant to be entitled to the one month extension envisaged in the rule, the application for extension of time shall be made within the prescribed period.

The reference to prescribed period obviously has to mean the period excluding the one month extension. This is clearly established from the title of Rule 138 which reads “Power to extend time prescribed” (title of a provision is an internal aid of interpretation).

For instance, let us consider the period prescribed by the Act for an applicant to enter the National Phase application in India from the PCT international phase. Rule 20(4)(i) prescribes 31 months as the period within which a National phase application may be made. In other words, any extension under Rule 138 must be over and above the 31-month period.

However, the request for extension under Rule 138 must be made within the prescribed period. Therefore, if an application for extension of time in the case of a national phase application is not made within the prescribed 31 months, a month’s extension under Rule 138 is simply not available for the applicant.

It must be borne that Rule 138, as it exists today, is the result of an amendment vide notification dated December 28, 2004. Prior to the amendment, sub-rule (2) of Rule 138 read as follows:

(2) Any request for extension of time made under these rules shall be made within the extendable period by request unless otherwise provided in these rules.

The rule was amended to substitute “extendable period” with “prescribed period”. Strictly speaking, there is no difference between “extendable period” and “prescribed period” since the former refers to period that can be extended, which is the same as “prescribed period”.

However, probably to avoid confusion, the legislature deemed it fit to use “prescribed period”, making the amendment a clarificatory one.

The essence of all this is that no application for extension of time can be entertained if the request for extension is not made within the prescribed period. Further, what must also be taken into consideration is that Rule 137 cannot override Rule 138 since the latter specifically addresses extension of time (a specific provision usually prevails over a general provision).

Critically, an extension is not permissible with respect to a national phase application since Rule 20 categorically states that a national phase application will be deemed to have been withdrawn if it is not made within 31 months. This means the provision is set into motion automatically, with no room for exercise of discretion by the Patent Office or the Court.

Considering these reasons, I am sure most practitioners would agree to disagree with the Madras High Court’s decision. 

Tuesday, March 15, 2011

Off Topic: Lessons to Learn from Japan

It started off with 100, then 300, followed by 900, and if latest reports are to be believed, the expected death toll is over 10,000 from the Killer Tsunami and Earthquake that rocked Japan last week. 

The magnitude of destruction and havoc wreaked by nature on that resilient nation is unfathomable and is beginning to assume eschatological proportions with each passing day, making it certainly one of the worst natural catastrophes in modern history.

About 1,00,000 Japanese troops have been pressed into service, approximately 2,00,000 people have been evacuated from affected areas and about 2,15,000 people are in shelters. It goes without saying that food, water and electricity are in acute short supply. 

Even for the richest nation in Asia, a calamity of this malevolence poses a mounting humanitarian and financial crisis at an unprecedented scale, which is best reflected thus:

"We have requested funeral homes across the nation to send us many body bags and coffins. But we simply don't have enough," 

Notwithstanding all this, the loss of lives would have been even more exponential had it not been for Japan’s preparedness for a mega-disaster such as this. From what I gathered from news reports:

"If there is any place in the world ready for a disaster of the scale and scope of this historic calamity, it is Japan," 

According to Stacey White, senior research consultant at the Centre for Strategic and International Studies, Japan has shown the rest of the world just how many lives can be saved with a reliable warning network, a state-of-the-art infrastructure and a strong government response.

According to Toshitaka Katada, a professor at Gunma University's Disaster Social Engineering Laboratory, the Japanese government, for several decades now, has made protecting citizens from disasters, a state responsibility. He says:

“Local administrative bodies are trained to quickly issue alerts and evacuation orders and distribute food and blankets at shelters.

Japan’s most prized asset- technology- has been employed to bolster the preparedness of a country that experiences close to 1500 tremors a year. Japan is today considered the world leader in quake-proofing technology.

Law too has kept pace with technology. In 2007, a law was passed which mandates tougher quake-proofing of new buildings. According to one news report:

“Under the law, skyscrapers, factories, power stations, bridges and railway stations must be built or retrofitted to withstand stronger tremors, so that a magnitude-five quake would now normally cause little damage.

If a number of lives have been saved by these quake-proofed buildings, I think it tells us that rule of law plays a critical role because a hospital or a school is less susceptible to quake if the quality of quake-proofing has not been compromised on by a state machinery which has zero tolerance for graft. (I wonder how effective this law would have been in India considering that our government swears and lives by graft...)

For those interested, the 2005 UNISDR Japan Country Report neatly sums up Japan’s preparedness to face disasters. It makes for compulsory reading at a time like this.

I would love to go on a rant on how unprepared we are as a nation for natural disasters, but I guess that is old news. I fondly hope we draw some lessons from Japan and prove to ourselves that we, as a nation, are not as incorrigible as we think we are.

Anyways, one just prays that in this hour of grief, Japan digs deep into its legendary never-say-die spirit to rebuild itself and to show to the world what is it that makes Japan the awe-inspiring success story that it has been for the better part of its history.

On an aside, the one entity that has proven itself immensely useful is Google. Google’s person-finder application and its crisis response project have done for Google what a million corporate social responsibility initiatives couldn’t have. This, for me, is true innovation.

(P.S: Please watch the youtube video links on the blog on the tsunami that hit Japan)

Friday, March 11, 2011

Unpublished Works and Their Copyright Status-III

In the last two posts, I had rambled on how unpublished works probably do not have copyright protection under the Indian Copyright Act owing to absence of a specific term for such works in the Act.

In retrospect, I think I must admit that my research on the issue was not just incomplete, it was rather superficial.

In this post, I will present the counter-arguments to the proposition. Again, let’s start with Section 16, and this time we will interpret the provision to suit the counter-position.

16. No Copyright except as provided in this Act- No person shall be entitled to copyright or any similar right in any work, whether published or unpublished, otherwise than under and in accordance with the provisions of this Act or of any other law for the time being in force but nothing in this section shall be construed as abrogating any right or jurisdiction to restrain a breach of trust or confidence.

Before I proceed further, I thank Divya Subramanian for sharing with me her thoughts on the underlying objective which Section 16 seeks to achieve.

My first take on the provision was that, it leaves it open for authors to explore non-copyright options in the absence of a copyright in their work until it is published. However, a second reading makes it pretty obvious that the provision in fact makes room for non-copyright infringement actions, despite the availability of a suit for copyright infringement.

In other words, the provision states that:

1. There is no copyright in any work, published or unpublished, other than the copyright vested in it under the Act

2. That said, notwithstanding the presence of copyright in the work under the Act, an author or copyright owner is still entitled to use/assert his rights to restrain breach of trust or confidence. Put simply, vestation of copyright does not disentitle an author or owner from instituting a suit for breach of trust or confidence.

Therefore, nowhere does Section 16 allude to preclusion of unpublished works from the realm of copyright. In fact, the presence of “published or unpublished” in Section 16 itself indicates that issues pertaining to unpublished works too are covered by the Copyright Act.

Add to that, as pointed out by Bihu Sharma, Section 13 too speaks of unpublished works (a glaring omission on my part). Further, Section 18, which refers to assignment of copyright, is another telling pointer. Section 18(1) of the Act reads thus:

18. Assignment of Copyright: (1) The owner of the copyright in an existing work or the prospective owner of the copyright in a future work may assign to any person the copyright either wholly or partially and either generally or subject to limitations and either for the whole term of the copyright or any part thereof:

Provided that in the case of the assignment of copyright in any future work, the assignment shall take effect only when the work comes into existence.

The proviso states that in assignment of copyright in any future work, the assignment shall take effect only when the work comes into existence. If publication were necessary for vestation of copyright, the proviso would have said the assignment in future work shall come into existence upon the copyright in the work coming into existence, as opposed to the work itself coming into existence.

It is therefore clear that copyright comes into being as soon as the work comes into existence.

As for term, Sections 22 and 23, which I had previously cited to relate publication to vestation of copyright, both provisions refer to “subsistence” of copyright, as opposed to vestation. Simple English tells us that subsistence refers to survival of a thing that is already in existence.

The implication is that Sections 22 and 23 limit the term of the works referred therein to the term mentioned in those provisions. In other words, in the absence of a limitation to the term, the term would have been unlimited.

This applies in the case of unpublished works too i.e. although Section 13 vests unpublished works with copyright, since there is no provision in the Act which limits the term of the right in these works, it follows that the copyright in unpublished works lasts for eternity. Only when they are published do they fall within the penumbras of Sections 22 or 23.

If there are other perspectives on this issue, including other lines of enquiry, we welcome them! and if the very topic of the post and the conclusions are downright obvious, please ignore the posts on the issue. We take pride in ruminating on the obvious ;-)

Wednesday, March 9, 2011

Unpublished Works and Their Copyright Status- II

‘Confute’ is a word I wasn’t familiar with until a few days back. Apparently, its roots lie in the Latin word “Confutare” which, among other things, means “to put down” or “to silence”. 

In a debate, “confute” is typically understood to mean “to conclusively refute”, thereby making confute a portmanteau of sorts. The conclusions that I was inclined to arrive at in the last post on the status of unpublished works are on the verge of being "confuted" by my friends and colleagues starting with Bihu Sharma, Sneha Jain, Divya Subramanian, Maanav Kumar and Chhavi Jain, to all of whom I am thankful. Looks like flawed posts are the best way of getting people to talk ;-)

In this post, I shall first state the proposition, counter-proposition and provide additional arguments supporting the former.

Proposition: No Publication, No Copyrights
Counter-position: Mere Creation Gives Birth to Copyright

To a very large extent, arguments supporting the proposition have their foundations in the balance typically sought to be struck between private rights and public interest, which is characteristic of IP rights. Stated simply, if members of public do not have access to a work, the author is not entitled to stake a claim for copyright.

Although this sounds unfair to an author, it could be argued that all that the author is deprived of is the copyright in the work, and not any other right which avails him certain other remedies. This is one way of interpreting Section 16 of the Copyright Act which affords an author the right to institute action for breach of trust or confidence.

For ease of reference, here’s Section 16 again:

16. No Copyright except as provided in this Act- No person shall be entitled to copyright or any similar right in any work, whether published or unpublished, otherwise than under and in accordance with the provisions of this Act or of any other law for the time being in force but nothing in this section shall be construed as abrogating any right or jurisdiction to restrain a breach of trust or confidence.

In other words, if a personal diary or a letter is published without the author’s consent, such publication will not constitute valid publication since it suffers from absence of consent from the author. Consequently, if publication were to be accepted as the sine qua non for vestation of copyright in the work, the author of the work cannot institute action for copyright infringement since there has been no valid publication of the work.

If so, if the author institutes action for breach of trust or confidence, what must he do to convert the action to one for copyright infringement? Publish the work himself. Is it possible to don a blackcoat’s hat and find some semblance of support for this position from Section 16? May be...

Section 16 says “No person shall be entitled to copyright or any similar right in any work, whether published or unpublished...,”. It could be argued (some might say, in an inebriated state) that “copyright” has been used in the provision with reference to a published work and “any similar right” is with reference to an unpublished work.

If this is to be accepted, what is the nature of “any similar right”? What exactly is that “similar right”? The “similar right” could be the right to acquire copyright in the work i.e. the right to publish the work and hence acquire copyright in it. Walter v. Lane appears to take a similar position on unpublished works. The relevant portion of the decision is as follows:

It is plain that a person who is not the author of a work may nevertheless be the proprietor of the copyright in it; for example, in the ordinary case of an assignment of copyright. The author is one person, the proprietor of the copyright is another. The expression "proprietor of copyright" constantly occurs in the Act. Sometimes the expression clearly includes author; sometimes it as clearly does not, but means his assign. The latter part of s. 3, which relates to the publication of books after the death of their authors, shows that authors and first publishers are by no means synonymous expressions.

Again, s. 16, which relates to actions for infringement and objections to the title of the plaintiff, shows that authors and first publishers may stand on different footings. The wording of these sections justifies the view that the owner of an unpublished manuscript, although not the author of it, acquires copyright in it by first publishing it. That has been decided in Scotland, and the cases are referred to in Phillips on Copyright, pp. 55 and 56. He refers to Maclean v. Moody and Dodsley v. M'Farquhar .

The author of an unpublished manuscript has no copyright in it, but he has a right to acquire copyright in it; and this right he may impliedly transfer to anyone to whom he sells or gives the manuscript. Further, an author who sells or gives away an unpublished manuscript/ composition of his own may be fairly inferred to transfer his own right to publish it, unless he expressly or impliedly prohibits the publication of the manuscript which he sells or gives. This is intelligible, but it does not carry the plaintiffs far enough. 

A thief or other unlawful possessor of an unpublished manuscript would not acquire copyright in it by first publishing it. He would not be the author or proprietor of the manuscript. Again, Lord Rosebery had no copyright in his speech, and although he could have acquired copyright in it by putting it into writing, and printing and publishing it, he did not do so; and there is no evidence whatever to justify the inference that he transferred to the plaintiffs his right to acquire the copyright in his own compositions, whether written or verbal. 

The plaintiffs do not derive their title to their publication from Lord Rosebery. Sect. 18 of the Act refers to copyright in what is printed in newspapers and periodical publications. Unless otherwise agreed, the copyright in such matter belongs to the author. But the publisher or proprietor of the newspaper, &c., can himself obtain the copyright in any article published in the newspaper, &c., if he employs someone to "compose" what is published on the terms that the copyright shall belong to the publisher or proprietor. 

The word "compose" here cannot mean copy or write from dictation; it obviously means compose in the sense of being the author of the matter published. This is made perfectly clear by the language of the provisos, which prevent the publisher or proprietor of the newspaper, &c., from publishing the article in a separate form without the consent of the "author," and entitle the author to publish it himself in a separate form. The "author" here is the person employed to "compose" the article. 

The more closely the Act is studied the more clearly it appears that, in order that the first publisher of any composition may acquire the copyright in it, he must be the "author" of what he publishes, or he must derive his right to publish from the author by being the owner of his manuscript, or in some other way

If the gist of the above extract from Walter v. Lane, were to be accepted, it may still be possible for us to reconcile the proposition with the phraseology of Section 17(a) and (c) of the Copyright Act, which reads thus:

Subject to the provisions of this Act, the author of a Work shall be the first owner of the copyright therein :

Provided that –

(a) In the case of a literary, dramatic or artistic work made by the author in the course of his employment by the proprietor of a newspaper, magazine or similar periodical under a contract of service or apprenticeship, for the purpose of publication in newspaper, magazine or similar periodical, the said proprietor shall, in the absence of any agreement to the contrary, be the first owner of the copyright in the work in any newspaper, magazine or similar periodical, or to the reproduction of the work for the purposes of its being so published, but in all other respects the author shall be the first owner of the copyright in the work.

 (c) In the case of a work made in the course f the author’s employment under a contract of service or apprenticeship, to which clause (a) or clause (b) does not apply, the employer shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein.

In other words, when a work is created in the course of employment, it could be said that what is transferred from the author to the employer or the proprietor of the newspaper is the right to acquire copyright, and not the copyright itself. Again, the same argument could be used to reconcile the proposition with Section 18 of the Act, which deals with assignment of copyright in a future work.

Although, one could continue to reconcile the proposition with other provisions of the Act, principles of interpretation and prudence tell us that if there are two possible lines of interpretation, the one which is less tenuous and more practical must be opted for. In the next post, we will consider reconciling the counter-proposition with the provisions of the Act.

(Image from