Sunday, September 25, 2011

Battle of the Bands...

I don’t think I know anybody who doesn’t like music. And even though I know individuals with eclectic tastes, and have indulged in verbal spats over who and which is better, little did I indulge myself into an issue, that to the best of my knowledge, is yet to come forth Indian Courts - The survival of BAND names!

Although under the law of trademarks, generally speaking, names of individuals are not registrable as trademarks, however, with secondary meaning, acquired distinctiveness and well known trademarks (and as many synonyms as there may be), the probability of a band name being registrable rises. 

If one were to apply the rationale that trademarks are source indicators, the name of a band is undoubtedly the indicator of the source of music.

But having said this, another question that arises is- once a band breaks up, what is the fate of its name? Does each individual get to carry its identity forth in his or her own unique way, or does each band member forfeit his right to use the name? I don’t think there is a black letter rule to this. 

If each band member were allowed to use the band name, the source indicator, to my eyes, would be a source of confusion.

But if every member were disallowed to use the name, applying a moral rights sort of rationale (although there are no moral rights grounds in the world of trademarks), each member by virtue of his contribution, should be allowed to continue to use the name of the band.

Or is a third route more apt? Allowing the use of a band name in a nominative sort of way- In other words, in a way to indicate that the performer was part of a certain band, but clearly indicating he is no longer part of the band.

In practice, I believe this is what is done, which while allowing the performer to relate himself to an identity by virtue of which he may be better known, yet does not infringe upon any rights that collectively existed upon all the members of the band. 

My review of song titles and performer names, as I was on my travels this last month or so, reveals names such as Cream of Clapton (When Eric Clapton was part of Cream), Sting of The Police (Sting, when he was part of The Police) and so on. However, Pink Floyd, is one amongst some bands that continued so, and even as Barett and others came and went, have not attached Floyd to their individual cover versions.

The problem would perhaps be resolved if it were a scenario, where the moment a band is created, it incorporates itself as a legal entity. Although a partnership agreement shouldn’t be a problem, however other forms of legal incorporation may require a stricter mandate to be followed. 

Further, where several individuals partner to form a “band” and not merely perform together, under the aegis of a “lead” artist, the problem walks into a dark tunnel. I presume, that in such an instance, a Work made for hire sort of rule would append.

A cursory survey of the US law has 2 scenarios set out. The first is where a Band name is permanent, but artists are doled in and out- in such a case the manager or record label that is responsible for the functionalities of the band, owns the name.

The other scenario is where the artists have named the band and eventually fall outs happen. Some Courts here, rule that all members are allowed to use the name, so long as they sufficiently distinguish one break off from the other.

I find such a ruling from a US Court rather interesting, especially since a moral rights regime is almost non-existential in their jurisprudence. However, to me it seems that under the Lanham Act, where provisions governing aspects such as False and Misleading Advertising exist, such a decision finds logic.

Drifting back to the Indian scenario, what is it likely to be? Two things come to mind-

a. May be Band names can acquire their own right as a trademark, since fashion designers etc. whose names having acquired secondary significance have sought registrable rights; or,
b. Authors/bands cannot have rights, since under the copyright regime, only their works are protectable and they have nothing but moral rights in their names.

Further, as I see and understand, the manner in which IP law is to be interpreted calls for mutually exclusive protections, devoid of any overlap whatsoever. Being a fuzzy area, I wonder what our readers have to say on this…

Chennai Patent Office Rejects TVS Motor's Application

In a slightly dated order passed in February this year, the Chennai Patent Office rejected TVS Motor’s patent application titled “A Self-Locating Ignition Lock Assembly”. The principal claim of the application reads as follows:

“A self-locating ignition lock assembly for a motor vehicle comprising a lock body with a key slot for receiving the ignition key therein, said body having a key plate securely fixed to it, said plate having an aperture shaped to expose the key slot; and the plate being made of a fluorescent substance for absorbing light energy during the day and rendering itself fluorescent to be visually self-locating during the night”.

The inventive step of the invention lay in the use of fluorescent material for the plate which can absorb light and emits it at night (which means the plate is visible at night).

The Patent Office cited US6060985 and US5709453 saying these documents anticipate and render obvious the invention. The former discloses use of luminous fluorescent reflector which forms part of the visible face of the instrument panel of a motorcycle.

The second US patent discloses an illuminating strip which may be used to shed light on the devices/instruments adjacent to it. The illuminating strip uses a light conducting material that has a fluorescent substance. The sheet has two portions, one to gather light and the other to emit it.

From the above two patents, what is clear is that the use of fluorescent substances to illuminate instrument panels in vehicles in fairly known. However, does this mean that Claim 1 of the TVS application lacks in novelty?

For this, one must understand what is claimed as novel about the invention. Use of a fluorescent material either as part of the instrument itself or as an illuminating device/strip is known in the art. But, does the art, or at least the cited US patent documents reveal use of fluorescent material as the material for the construction of the body of the instrument panel, which absorbs and emits light? 

I don’t think so because, the first document merely reveals use of fluorescent material, and the second speaks of an illuminating strip that has light-absorbing and emitting portions.

In contrast, in the TVS application, the very body of the panel/ignition lock assembly is made of fluorescent material, the whole of which can absorb and emit light. Therefore, at best both the US documents put together may render the TVS application obvious. However, these US patents don’t seem to erode the novelty of the TVS application since neither of these individually discloses all essential embodiments of the TVS application.

That said, I’d agree with the finding that the TVS application suffers from lack of inventive step.

The Patent Office however rejected the application on both grounds that it is neither novel nor non-obvious. 

Saturday, September 24, 2011

Copyright- “Statute-Governed” or “Statutory”?

Is registration of copyright mandatory? Does registration of a work under the Copyright Act lead to vestation of copyright? Or is it a mere recordal of the work in which copyright subsists? 

If an application for registration of copyright under Section 45 of the Copyright Act is rejected by the Copyright Office, does rejection deprive the work of the copyright in it?

Several judgments of various High Courts have categorically ruled that registration of copyright in not compulsory, and this is for good reason. Section 45 of the Copyright Act clearly states that an author/publisher/owner/other interested person “may” make an application for copyright. 

Copyright registration, therefore, is not mandatory for the exercise and enforcement of the right. This is fairly obvious and there is nothing earth-shattering in this conclusion.

So long as any work satisfies the fundamental requirements for vestation of the right such as originality and fixation, and it falls within the subject-matter enumerated in the Act, copyright subsists in it. To restate Section 16 of the Act, as long as a work satisfies the prerequisites of a copyrightable work as required by the statute, the work enjoys copyright protection.

This means copyright under Indian law, is strictly not a “statutory copyright”, but is in fact a right whose vestation is governed by the statute. A statutory right is one which is granted by or under a statute, however a right whose subsistence is regulated, but not granted by a statute, cannot be rightly called a “statutory right”.

For instance, a patent is granted, similarly a registered trademark too is the product of grant. Therefore, these rights may be called “statutory rights”.  Copyright, on the other hand, is a right that subsists in a work subject to fulfilment of certain conditions (of which registration is certainly not one). Hence copyright is a "statute-governed right", but not a "statutory right".

If registration of copyright is not mandatory, and it does not vest or buttress vestation of copyright, what does it attest to? It attests to the title of the applicant/author/registrant over the registered work. In other words, it serves to support a claim of copyright ownership in the work.

Since registration is merely to establish title over the work, does rejection of an application for registration translate to deprival of copyright in the work? By now, the answer must be fairly clear, which is NO. Copyright in the work continues to subsist even if application for registration is rejected.

Also, registration is merely prima facie evidence of copyright ownership, which means the presumption raised by registration of copyright with respect to ownership is not irrebuttable. Copyright ownership is still open to challenge even if the work has been registered under the Act.

Does registration of a work have implications on burden of proof when the registrant/owner of copyright institutes a suit for copyright infringement? In other words, does registration of copyright translate to presumptive validity of copyrightability?

The answer is again a clear NO. Since registration neither decides copyrightability nor vests a copyright, existence of registration does not translate to presumptive validity of copyright in the work. It merely amounts to presumptive validity of title of the work in the name of the registrant.

The further consequence of this is, although the copyright owner/plaintiff’s ownership over the work is supported by the registration, he still has the burden of proving copyrightability of the work.

Therefore, existence of copyright registration does not relieve the Plaintiff of the burden of proving that his work is eligible subject-matter for a copyright in the first place. Until this is established, he or she cannot proceed to the issue of infringement.

This is unlike the Trademark Act which bestows presumptive validity on a registered trademark. 

Friday, September 23, 2011

Joinder of Multiple Defendants in a Patent Infringement Suit

In a suit for patent infringement, would it be permissible for a Patentee to array all parties which infringe his patent as Defendants in the same suit? Obviously, the Patents Act cannot provide an answer to this question. One has to look into the Code of Civil Procedure.

If, for instance, 3 entities use the patented technology of X, the mere factum of use of the patented technology by all three parties does not allow the patentee to name all 3 entities as defendants in the same suit.

This is because under Order 1, Rule 3 of the Code of Civil Procedure, not only must there be a common question of fact or law arising with respect to all 3 entities, but all 3 entities must be connected by the same act/series of acts or transaction/series of transactions which gives rise to an actionable cause(s) in favour of the patentee.

Illustratively, C must be the retailer of a product which was purchased in bulk from B, who bought it from a manufacturer A. If the product uses the patented technology of X, X may name A, B and C as defendants in the same suit.

However, if A, B and C are 3 entities which have no connection to each other, nor have they entered into a transaction or series of transactions between themselves, then A, B and C cannot be named in the same suit. Instead, the patentee X will need to institute 3 different suits against each of the infringing entities/persons.

The US procedural law too appears to be the same on this point. In a decision passed in Optimum Power Solutions LLC v. Apple Inc., et. Al, a US Court held that joinder of parties needs involvement of the defendants in “same transaction, occurrence or series of transactions or occurrences”, and not just commonality in questions of fact and law. 

The same reasoning was applied in Tierravision, Inc. v. Research in Motion Ltd., et. al, where the US Court held that similarity in software applications used by different entities did not justify joinder as defendants in the same suit.

Wednesday, September 14, 2011

Can Interested Parties File a Joint Revocation Petition?

Section 64 of the Patents Act deals with filing of revocation petition by “persons interested” which is defined in Section 2(1)(t) of the Act. Is it possible for a host of interested persons to file a single revocation petition? Yes, provided they intend to assail a patent on the same grounds and using the same prior art documents. There is no bar in the Act against filing of a joint revocation petition.

It appears the IPAB has indeed begun accepting joint revocation petitions.

Is it possible for parties to file a representative revocation petition? The CPC allows filing of representative suits provided all parties on whose behalf the suit is filed, have the same interest in the suit. Since there is no bar in doing so under the Patents Act, and it hurts none (other than the IPAB’s revenue), my opinion is it is possible for one party to file a representative petition on behalf of all interested parties.

The IPAB Rules envisage another alternative- Rule 15 of the IPAB Rules permits parties to file intervention applications. So, one party could file a revocation petition, with other interested parties filing intervention applications to take part in the revocation proceedings.

Sunday, September 11, 2011

Delhi Patent Office Rejects Boehringer’s Application Citing Section 3(d)

Boehringer Ingelheim’s application for a patent on “3-[(2-{4-(Hexyloxycarbonylamino-Imino-Methyl)-PhenylAmino]-Methyl}-1-Methyl-1h-Benzimidazol-5-Carbonyl)-Pyridine-2-Yl-Amino]-Propionic Acid Ethyl Ester Methane Sulphonate and Use Thereof as a Medicament” was rejected by the Delhi Patent Office earlier this year.

Since the reason for the rejection was Section 3(d), I thought it might be worthwhile to take a look at the decision and report a few more decisions on 3(d) rejections by the Patent Office to understand if there’s a pattern in them.

The claimed invention 3-[(2-{4-(Hexyloxycarbonylamino-Imino-Methyl)-PhenylAmino]-Methyl}-1-Methyl-1h-Benzimidazol-5-Carbonyl)-Pyridine-2-Yl-Amino]-Propionic Acid Ethyl Ester Methane Sulphonate was meant to be used for post-operative prophylaxis of Deep Vein Thrombosis (DVT). (Prophylaxis refers to preventive treatment of any health condition)

The invention is derived from the free base form of Ethyl3-[(2-{4-(HexyloxycarbonylaminoImino-Methyl)-Phenyl Amino]-Methyl}-1-Methyl-1h-Benzimidazol-5-Carbonyl)-Pyridine-2-1 Yl-Amino]-Propionate.

This free base form has been referred to in prior art as BIBR-1048 or BIBR-1048 base. Its methanesulphonate salt too is known in the prior art and has been referred to as BIBR-1048MS.

The claimed invention specifically restricts its claim to polymorph II i.e. the crystalline form of BIBR-1048MS.

The question before the Patent office was that, in light of the prior art disclosing the free base BIBR-1048 and its methanesulphonate salt BIBR-1048MS, did the claim over the crystalline form of BIBR-1048MS contain an inventive step? 

Did the crystalline form of BIBR-1048MS disclose greater efficacy in treating post-operative DVT which could not have been gleaned from the information already available on the use of the free base and the salt for the condition?

Boehringer submitted to the Patent Office that the water solubility of the free base was 0.003 mg/ml. In contrast, the claimed invention exhibited greater water solubility levels of 1.8 mg/ml. Boehringer also submitted that bioavailability is directly connected to water solubility and since the invention increased the water solubility of the compound, it resulted in increased bioavailability as well.

This argument did not find favour with the Patent Office because it is a known fact that salts exhibit greater water solubility than freebases. The Patent Office on this point observed thus:

The applicant argued that the methanesulphonate salt of BIBR-I048 shows good solubility in water. However, this is a phenomenon regularly observed with salts, as compared to the free bases (in this case BIBR-I048 as disclosed in D2), and the search for suitable salts of bases is one of the standard procedures in pharmaceutical chemistry. Hence, this difference cannot give rise to an inventive step

The Patent Office took the view that the specification was bereft of data on stability and moisture absorption when the prior art considered these details critical in the assessment of pharmaceutically active substances.

Critically, the Patent Office cited a prior art document, a PCT application WO03/074056 which discloses ethyl 3-[(2-{[4-(hexyloxycarbonylamino-imino-methyl)-phenylamino]-methyl}-1-methyl-1H-benzimidazole-5-carbonyl)-pyridin-2-yl-aminolpropionate methane sulphonate and process of its preparation.

This document, according to the Patent Office, in fact discloses the crystalline form of BIBR-1048MS whose melting point is 178-179°Celsius. The melting point of the claimed invention was 190±3°Celsius. The Patent Office observed that no evidence had been submitted by the applicant to distinguish the prior art compound from the claimed invention when the characteristics were near-identical.

Dorland’s Illustrated Medical Dictionary was cited by the Office, which defines efficacy as the ability of a drug to produce the desired therapeutic effect and it is independent of potency, which expresses the amount of the drug necessary to achieve the desired effect. 

Stating that the applicant had not provided any experimental data on significant enhancement in therapeutic efficacy, besides lack of proof of enhancement of critical properties, the Patent Office rejected the application.

On first blush, this decision appears grounded because the Patent Office seems to have gone through the prior art with a fine-toothed comb. That said, since I am not a person of ordinary skill in the art in field of the invention, I’ll leave it for better informed and trained readers to volunteer with comments on the decision. 

Thursday, September 8, 2011

Stale News: Unitary Patents in Europe

On June 27th of this year, the European Union Council seems to have leapt a step closer to the creation of a “Unitary Patent System” in Europe. The creation of a unitary patent system would mean unitary treatment of European patents after their grant.

The European Patents granted presently can be centrally opposed within 9 months of grant; however, after the expiry of this period, each of the European patents has to be opposed or revoked nationally. In other words, different national standards are applicable to judge national patents granted by the same authority- EPO.

In contrast, unitary patent protection refers to uniform treatment of the patents in all contracting EU states even after the grant. In other words, the treatment of the patent and its scope will be uniform in all contracting states of the treaty. This also means that only a centralized revocation of the unitary patent is possible.

From a TRIPS point of view, contracting states end up waiving their domestic flexibilities to set and apply their own standards for patent protection. However, the consideration that seems to motivate EU States to adopt this approach is the creation of an “Internal Market”, which requires evolving a cheaper and access-friendly patent system which is free from the legal unpredictability arising from national treatment of patents.

I will discuss the finer points of the unitary patent protection system in another post, what is however worth mentioning is that Italy and Spain have bitterly opposed the proposed system, one prominent reason for which is the trilingual system sought to be adopted for translation- English, French and German.

Also, on a different note, Richard Stallman, father of the Open Source movement and its chief ideologue, has expressed fear that Unitary Patent Protection may end up facilitating proliferation of software patents in Europe and trigger a software war, similar to the one being duked out in the US.

According to him, European Commission’s proposal on software patents, although ostensibly opposes grant of patents to software, goes easy on the “inventive step” requirement. He says that the Commission merely requires the presence of a physical step, instead of insisting that the inventive step must be present in the physical step (similar to the material transformation test of the US).

I haven’t come across the text of the EC proposal yet, so I am hoping there is some truth in what Stallman says. I’ll post more on this interesting and critical development in the days to come. 

Sunday, September 4, 2011

Off Topic: The Cynicism and Criticism Surrounding the Indian Anti-Corruption Movement

Warning: This post has nothing to do with IP law, although it may have something to do with the administration of every government establishment, including the Indian IP establishment. (This Post has been edited to correct a few errors in sentence construction and facts)

For 3 months now, the 2011 Indian anti-corruption movement, as Wikipedia calls it, has been occupying the centre stage of Indian politics. 

The face of this movement arguably is Mr.Kisan Baburao Hazare, better known to scores of his enemies/detractors/critics/agnostics /admirers/followers/fans/devotees as “Anna Hazare”.  

Anna’s core group of activists, as on date, consists of:
1. the retired super cop and Magsaysay awardee Ms.Kiran Bedi, who has the distinction of being the first woman to join the Indian Police Service (IPS);
2. Mr.Arvind Kejriwal, an IIT Kharagpur alumnus, one of the most visible faces of the Right to Information movement and yet another Magsaysay awardee;
3. Mr.Shanti Bhushan, a former Union Law Minister and a renowned senior advocate of the Supreme Court of India;
4. Mr.Prashant Bhushan, son of Mr.Shanti Bhushan, and an activist lawyer practicing before the Supreme Court of India. He has been one of the most ardent voices against corruption in the Indian Judiciary.

Two other names which were earlier part of the core group are Justice Santosh Hegde, former Judge of the Supreme Court of India, and Swami Agnivesh, a political activist.

Anna and his team, christened “Team Anna” by the media, run an organization called “India Against Corruption”. One of the primary objectives of Team Anna is to push for a strong anti-corruption legislation called “The Jan Lokpal Bill”, which envisages the creation of a super ombudsman who has the power to investigate and prosecute charges of corruption against, bureaucrats, the judiciary and ministers, including the Prime Minister.

The salient feature of the legislation proposed by Team Anna is that the authority established under this proposed law, namely “Lokpal”, will not be a political appointee. There are several other such features, which is not exactly the point of this post. For a better understanding of Team Anna’s version of the Bill, please visit here.

The version proposed by the Government, which is seen as a boneless spineless wonder by Team Anna and large sections of the population, is available here.

A comparison of both versions of the Bill, as presented by Team Anna, is available here.

Now, to the actual topic of the post. Anna’s movement, in particular, his non-violent fast-unto-death protest has won the “hearts and minds” of people the world over, and accolades have poured in even from ostensibly the most unexpected quarters- Pakistani media and middle class.

Even the Chinese could not remain oblivious to this mass movement.

It so happens that despite the din surrounding Anna and everything that relates to him, criticism about the means employed by him, and the “undemocratic” consequences that his movement may have in the long run, has turned from audible susurration to shrill ululation.

What exactly is Anna being accused of by his critics?

1. His version of the bill is impractical and he has no knowledge of the subtleties and nuances of the law.
2. That he has held the entire Parliamentary (“due”) process to ransom, which is seen as erosion of respect for elected and constitutional institutions.
3. He is seen as being unfair, rigid, intransigent, and unrealistic when it comes to the timelines he has set for the Government to pass the legislation.
4. Apparently, he has set a precedent for all those who wish to employ similar means to blackmail the government to get what they want.
5. He is being deified beyond proportion and justification, which leads to concentration of power in the hands of one person by popular consent, although non-electoral consent.

Let me try and address the accusations in my own insignificant way. I will not address the first issue in this post because I am primarily interested in understanding what is so wrong with the way Team Anna has conducted itself, that people can’t resist plunging into hyperbolic extrapolations of Anna’s movement, and its so-called diabolical and eschatological consequences for the “Pure, Holy and Great Indian Democracy”.

I think the keyword in understanding Anna’s movement is “perspective/context”. Each of the above criticisms, in itself, may be valid and I have no issues even admitting that. After all, dissent and criticism are central to democracy and that is what Anna’s movement itself represents.

But, is it fair or even logical to judge this movement purely on the anvils of the premises underlying these accusations? Or are we looking at a moth-eaten version of the facts and factors which form the launch pads for these criticisms? I am of the honest opinion that the answer is probably the latter...

No legal process, especially a parliamentary process, has an existence in itself without a historical context to it, and students of jurisprudence must know this better because a non-contextual approach to law is quasi or pseudo-Derridean. It is like trying to make sense of applied mathematics by completely divorcing the physics represented by a differential equation. Maths without physics may be “pure”, but it is just numbers unless applied to the real world.

Law too cannot remain detached from history, power politics and popular movements. After all, in a democracy, it is the will of the people that is crystallised and presented as the Constitution. I am a great fan of “due process” myself having seen its beauty at work personally as a litigant (not a litigator), albeit on that rare occasion when it actually works for the benefit of a common person like me.

When Anna sets a deadline for the government to pass the Lokpal Bill, is he doing it because he derives sado-masochistic pleasure out of dictating terms to the Indian State? No. The Lokpal Bill has been placed before the Parliament several times in the past in 1969, 1971, 1977, 1985, 1989, 1996, 1998, 2001, 2005 and 2008, but each and every time in vain! No government, or political party for that matter, has the political will to pass this legislation because it is an openly accepted fact by all parties that corruption is not peculiar to a single party.

This means, an otherwise fractious polity which is characterized by an incorrigible schismatic pathology, comes together when it realizes that an anti-corruption Bill threatens its decadent way of functioning. Then how do you get the Parliament to pass the Bill? Are we to go the Maoist way and opt for the gun? Or should we get on to the streets and destroy, pillage and plunder public property like they did in London?

If electoral politics is the only way, then an honest man stands no chance of funding his elections in India. Sample this- the cost of funding a State assembly election in this country today is close to INR 15 crores (INR 150 million) per constituency. Assuming that Anna has the resources to contest elections today, how long would it take before he makes his presence felt in the Parliament? Probably years. 

Not just that, the moment he contests elections, his interests will be termed "political/vested interests". So, if there is a real entry barrier to entering legitimate electoral politics, and one’s conscience does not permit resorting to violence, what is the only option left? A non-violent movement.

When people start waxing eloquent about respecting parliamentary process, I really can’t help give out a mirthless laugh at their naivete because the Government itself has shown the disgusting levels to which it can stoop to, to stifle genuine criticism in the last few weeks. And this is a government that has been rocked by one scam after another, ranging from sports to realty to national security and the nation’s natural resources.

How do we expect this government to hear a common man out, when it has no respect for the parliamentary process or its own duty to the nation? The only mandate it seems to have is to hold on to power, no matter what the cost.

How do you trust or deal with a government which first uses its police powers to break up the first protest at the dead of the night, and then uses a botched-up calumnious campaign to dismantle the second? The bedrock of the parliamentary process is the people’s faith in the government of the day, of which there exists none today.

And yet, we have no qualms about calling this 73-year old man a “senile dotard”, who has “derailed” the parliamentary process. How can you derail something which has been derailed and has been in shambles for decades now? The cash-for-vote scam couldn’t have been a more pungent example of the extent of derailment of the parliamentary process, whose sanctity we are so selectively reminded of now.

Ironically, the amount of rancour that one senses today at the “derailment” of this “hallowed” process by a septagenarian’s non-violent movement against corruption, was and is conspicuous by its absence when the modesty of the Constitution and consequently the will of the people, was and is being serially and brutally violated by the honourable members of our distinguished Parliament.

There also seems to be this grave misconception that there is no room for participation in Team Anna’s version of the Bill. Transparency has rarely been a virtue of any Indian institution, and drafting of legislations is no exception to that. Until recently, solicitation of comments from the public was seen as a favour or a charitable act by the sanctimonious mandarins in the Parliament.

Contrast that with Team Anna’s open call to the public to participate in drafting the Bill, I think the sting out of the allegations of Anna’s “it’s my way or the highway” attitude is taken away.

As for serious reservations about the movement being replicated by nefarious entities with ulterior motives, this movement itself has been a prime example of the fact that the common man has a fair understanding of who he may repose his faith in, and who he may not. The common man knows that not everyone who can turn water into wine, or walk on water, or bring back the dead to life, is the son of Mary born of Immaculate Conception.

One clear example is the Telangana movement, which is slowly fizzling out because people have seen through the true intentions of their “leaders” and the way their “movement” has brought life to a standstill. Compare that with the code of conduct that Team Anna exhorts and urges its volunteers to adhere to, and I think the answer is fairly clear.

I can personally vouch for the unblemished conduct of volunteers, students and participants, having taken part in the protest myself on a Sunday when numbers were mind-boggling. Why is it that we fail to appreciate the fact that Ramlila grounds did not bear the incarnadine hue of Tahrir Square or any other popular uprising in the Middle East?

All these issues aside, we forget that the single biggest denouement of this movement is that it has jolted an entire nation out of its wanton slumber and has encouraged it to pay attention to what goes on in the Parliament, and how laws are made and how their very lives are much for “derailment” of the Parliamentary process!

When a Vice-President of Morgan Stanley (Hong Kong) takes an entire month off without pay to contribute his mite to the movement and joins the protest at Ramlila Grounds, when a Fakir (mendicant) contributes his day’s earnings to the movement, when students from all over the world plunge into the movement, and when the physically challenged, including visually challenged students, bear the scorching Delhi heat to sit alongside a fasting 73-year old man, I think this is exactly the kind of shock treatment this country has been waiting for a very long time.

Not for a moment am I suggesting that the end justifies the means, but then means justifying the end is a default rule which is to be observed when the entropy of the system is normal. However, when the system spirals out of control and appears to be in a perpetual tail-spin, I think it is movements like Anna’s which restore a semblance of meaning to public life and polity.

I must clarify that I don’t believe that everyone must agree with Anna’s “demands” or his style of functioning; after all, there must be people who don the mantles of keepers of conscience of this movement to ensure that mob mentality or mental slavery does not become the defining trait of the movement, and that reason still guides passion. But let’s not pounce on this man who, instead of basking in the glory of his moment, has returned to his town to resume his work.

If this movement needs to be taken to its logical conclusion, instead of letting it fizzle like the JP movement, let us volunteer with some concrete action, instead of acting like elitist bumptious arm-chaired critics. 

More Details of the CPCB Patent Controversy

Yesterday, I had blogged on a patent controversy involving the Chairman of the Central Pollution Control Board (CPCB), Mr.S.P.Gautam, in which he is alleged to have pushed for the adoption of his own patented device by the CPCB.

Another Times of India report, which I seemed to have missed earlier, has a few more details on the controversy.

According to the report, the invention relates to preservation of animal hides by freeze drying without the use of salts. The invention was patented by the Chairman before he assumed the position at the CPCB. 

Upon taking the reins of the CPCB, the technology was transferred to the Board on a 50-50 revenue sharing basis.

The CPCB in turn licensed the technology to a private entity, Enertech Engineering Pvt. Ltd for a period of 10 years.

In February 2011, the Chairman passed a directive banning the use or transport of leather which had been treated using salts. The leather industry was left with no other option but to purchase units with the patented technology at a cost of Rupees One Crore (INR 10 million).

The disturbing part is that while Chairman claimed the technology had been tested for commercial use, Council for Scientific and Industrial Research (CSIR) and Central Leather Research Institute (CLRI) did not share the Chairman’s view nor did they approve the technology.

Subsequently, industry organizations voiced their concerns to the Ministry on the cost of using the technology, its ineffectiveness and the arbitrary ban against use or transport of salt-treated leather.

Here’s the Chairman’s response to a TOI query:

"This is not the first patent. Fourteen patents have been signed by the CPCB, including this one, and no issue of conflict of interest was raised in those cases. The CPCB only sets standards. It does not mandate a specific technology, so where is the case of conflict?

According to the Chairman, the directive does not coerce people into using his technology since there were 6 other technologies, which could be employed. To this, voices from the leather industry say:

"It (the patented technology) processes only 5-10 hides at one time and needs 10-12 hours of constant high power. How many such machines are we supposed to put up? The cost of using this would be more than 60% of the cost of the industry. The other alternatives like refrigeration are costlier, so the industry is being forced to adopt the lyophilliser,"

M Rafeeq Ahmed, chairman of the All India Skin and Hides Tanners and Merchants Association, says that the ban on the use of salt treatment for leather was introduced without consulting members of the industry.

According to the Chairman, he was only doing what he was asked to by the Environment far, there is no information on whether an enquiry has been ordered into the issue by the Ministry.

We will keep our readers posted on the issue.

Suing Unknown Defendants for Patent Infringement

Sometimes a patentee may have a good case on merits for infringement of his patent, but it’s important for him to know the procedural nitty-gritties of instituting the suit in order for him to secure the relief he seeks.

Among the first things a patentee may need to know to sue an infringer, is the constitution of the infringer i.e. whether the infringer is an individual or a partnership firm or proprietorship firm or company or a Hindu Undivided Family (HUF).

But then, it is possible that the patentee knows nothing about the infringer, except the name in which the infringer carries on his business. Can the patentee proceed to institute the suit by merely identifying the infringer by the name or the style in which the infringer represents himself to the world?

Fortunately, the answer is a yes.

Patent suits, like other civil suits, are governed by the Code of Civil Procedure, 1908 (CPC, as lawyers call it). The CPC makes sufficient room for institution of suits against infringers by merely identifying them by their ostensible business names/styles.

Order 30, Rule 10 of the CPC specifically provides for such identification. It says:

10. Suit against person carrying on business in name other than his own: Any person carrying on business in a name or style other than his own name, or a Hindu undivided family carrying on business under any name, may be sued in such name or style as if it were a firm name, and is no far as the nature of case permits, all rules under this Order shall apply accordingly.

Let’s probe this provision a bit more. This Rule forms part of Order 30 of the CPC, whose title is “Suits By or Against Firms and Persons Carrying on Business in Names Other Than Their Own”.

Considering the wording of Rule 10 and the title of Order 30, would it be a fairly logical proposition to state that this Rule is not applicable when the defendant is a company?

It has been argued in a few cases that Rule 10 cannot be used when the defendant is a company. This is because Order 29 of the CPC, which obviously precedes Order 30, specifically deals with “Suits By or Against Corporations”.

What this means is that Rule 10 applies to partnership firms or individuals or HUFs, but not to companies since there is no Rule in Order 29 which is identical or similar to Rule 10 of Order 30. Therefore, it could be argued that when the infringing entity is a company, it must be identified by its registered name, and no other.

To support this argument, sometimes Section 147 of the Companies Act has been marshalled. Section 147 of the Companies Act requires a company to conduct its business under its registered name, non-compliance of which has penal consequences for the company.

However, Courts have held otherwise.  The Rajasthan High Court in M.K.M. Moosa Bhai Amin, Kota vs Rajasthan Textile Mills (AIR 1974 Raj 194) observed as follows:

Rule 10 enables a person to sue another in the assumed name. The underlying principle appears to be to facilitate suits against those who carry on business in the name other than their own. It is common experience that the business is carried on from one part of the world to another through post and goods are supplied on orders on credit.

The person residing at distant places and supplying goods on credit cannot be expected to know the names of the persons or the proprietors carrying on the business in the firm name which ordered the goods. It is to facilitate commercial transactions that Order 30, Rule 10 was enacted.”

A Full Bench decision of the Allahabad High Court in Rajendra prasad Oil Mills, Kanpur v. Smt. Chunni Devi, AIR 1969 All 1 (FB) was faced with the following issue:

"Whether a limited company falls within, the meaning of the expression 'person' as used in Rule 10 of Order 30 of the Code of Civil Procedure?"

The Full Bench after a review of a large number of decisions, answered the question as follows:

"A Limited Company falls within the meaning of the expression 'person' as used in Rule 10, Order 30 of the Code of Civil Procedure. This would be so even though the Limited Company may have been carrying on business in a name or style other than its own without any attempt to conceal its own corporate name and this fact was known to the party suing."

The Supreme Court has discussed the issue in Rashpal Malhotra vs Mrs. Satya Rajput And Another 1987 AIR 2235, however, this decision does not appear to put pause to the debate on the issue.

High Courts have even gone to the extent of saying that Rule 10 may also be used when the Plaintiff is aware of the Defendant’s constitution as a company. I am not sure the argument can be stretched to cover this situation because the premise underlying Rule 10 appears to be want of knowledge of the defendant’s details on the part of the Plaintiff.

Suffice it to say that where a defendant company conducts business under an assumed name, other than its registered name, Rule 10 of Order 30 may come to the aid of the Plaintiff. This is so because it is possible that certain companies may be conducting their business in violation of Section 147 of the Companies Act, and the Plaintiff may not be aware of this.

Further, there is no qualification or restriction in Rule 10, which says “Subject to other laws or the provisions of this Code”. If a qualification of this kind had been included, it would have seemed plausible to argue that the reference to other laws or the Code is a reference to the Companies Act or Order 29 of the CPC, thereby precluding the applicability of Rule 10 to a company or a juristic person.

Not just that, the beneficial intent of the provision must not be lost sight of, which is to allow plaintiffs to institute suits against parties whose constitution/antecedents he may not be aware of.

Corrections/opinions or case-laws on this issue are welcome! 

Indian Patent Office Rejects Google’s Patent Application for Targeted Advertising

Why do applicants apply for patents on ineligible subject-matter in India when the statutory proscriptions are so much more clearly worded than, let’s say, in the US? 

I couldn’t help asking myself this question after reading a decision of the Mumbai Patent Office rejecting Google’s patent application for a "computer-implemented" method for targeted advertising.

In a hearing held on April 8, 2011 under Section 14 of the Patents Act, Google’s application 1083/MUMNP/2007 for a patent on “Associating Features With Entities, Such As Categories Or Web Page Documents, And/Or Weighting Such Features” was rejected under Section 15.

The principal claim as originally filed read thus:

1. A computer-implemented method comprising:
accepting, by a computer system including at least one computer, a keyword-to-category association;
generating, by the computer system, at least one result using the keyword-to-category association;
serving, by the computer system, the generated at least one result to a user;
tracking, by the computer system, user behavior with respect to the served at least one result updating, by the computer system, a score of  the keyword-to-category association using the tracked user behavior; and
storing, by the computer system, the updated score of the keyword-to-category association in association with the keyword-to-category association

This was amended to read as follows:

1. A computer-implemented method comprising:
accepting, by a computer system including at least one computer, a keyword-to-Category association;
generating, by the computer system, at least one result using the keyword-to-category association
serving, by the computer system, the generated at least one result to a user;
tracking, by the computer system, user behavior with respect to the served at least one result
updating, by the computer system, a score of the keyword-to-category association using the tracked user behavior; and
storing, by the computer system, the updated score of the keyword-to-category association in association with the keyword-to-category association.

In the decision, the Patent Office seems to have primarily objected on grounds that the claim does not disclose an inventive step...but my question is, does this claim even satisfy the requirement of Indian law as far as eligibility of subject-matter is concerned??

Does the principal claim, in its original or amended forms, qualify as a system claim merely because the words “computer system” are present?

Para 1 of the Complete specification reads as follows:

"The present invention concerns advertising. In particular, the present invention concerns improving targeted advertising."

How does this invention not fall within the excluded/unpatentable subject-matter as spelt out in Section 3(k) of the Act? Where is the technical problem for which a technical solution is disclosed in the claim?

A further reading of the decision informs us that Section 3(k) was cited as the second ground of objection...shouldn’t patent-eligibility figure on the top of the priority list in examining a patent application?

That said, to give due credit to the Patent Office, the patent application was ultimately rejected citing Section 3(k) of the Act.

I am not against grant of patents to computer-implemented inventions (CII), but as the law stands today, my humble opinion is that the “invention” disclosed in Google’s application cannot be treated as a CII.

I think India should consider introducing preliminary examination of patent applications at the stage of filing to filter applications like these so that quality time may be invested in examining other applications. 

Saturday, September 3, 2011

Stale News: Chairman of Central Pollution Control Board in a Patent Controversy

Yesterday, the Times of India carried a news report according to which, the Chairman of the Central Pollution Control Board (CPCB), Mr.S.P.Gautam, has been trying to push his own patent on lyophilliser, a device used for freeze drying, for use by the Board.

Apparently, a directive by the CPCB too was passed requiring the leather industry to buy the technology claimed in the CPCB Chairman’s patent, which has not been tested yet.

When this issue, which involves conflict of interest, was brought to the attention of the Minister for Environment and Forests, Ms.Jayanthi Natarajan, she promised to probe into the matter.

I wonder if in developing the invention, the CPCB Chairman used the resources of the government. If yes, how did he file and get a patent in his name? Does the Government have an IP policy for its employees? I’ll read up more on this and share my findings with the readers.

Appeals to IPAB: A Few Thoughts

The Intellectual Property Appellate Board (IPAB), although functional for some time now, its true powers are still in haze. What orders of the Controller are appealable before the IPAB?  

Can an interlocutory order passed by the Controller or the Opposition Board in a pre-grant or post-grant opposition be appealed before the IPAB?

Let me explain this question better with a plausible hypothetical. A patent X is granted to P and a post-grant opposition under Section 25(2) is filed by Q against the grant of the patent X. P files his counter-statement along with evidence within the stipulated time. 

Q wants a month’s extension under Rule 138 to file his reply evidence under Rule 59 of the Rules. The Controller denies extension on grounds that the reason tendered for the extension is frivolous or that the law does not permit him to extend time in the case of reply evidence being filed under Rule 59. An interim order to that effect is passed against Q.

Can Q appeal before the IPAB against this interim order? Does Section 117A, which deals with appeals to the IPAB, allow for such appeals? If no, is a writ petition the only recourse left against such interim orders?

How does Section 117A read? It says:
(1) Save as otherwise expressly provided in sub-section (2), no appeal shall lie from any decision, order or direction made or issued under this Act by the Central Goverment, or from any act or order of the Controller for the purpose of giving effect to any such decision, order or direction.
(2) An appeal shall lie to the Appellate Board from any decision, order or direction of the Controller or Central Govt under........ sub-section (4) of Section 25.......

To understand if an appeal lies from an interim order passed by the Controller in a post-grant opposition proceeding, it is important to understand the combined effect of the underlined portions of the Section.

A. Sub-section (1) states that the appealable order or decision or direction must be “expressly provided” for in sub-section (2).

B. Sub-section (2) in turn says an appeal shall lie from “any decision, order or direction of the Controller” under all provisions specifically mentioned therein, including Section 25(4).

C. Section 25(4) refers to an order of the Controller in the post-grant opposition to either “maintain or amend or to revoke” the patent.

Since Section 25(4) refers only to an order to maintain/amend/revoke the patent, how can it be said that an interim order passed in a post-grant opposition too is appealable under Section 117A?

A possible argument could be based on the wording of sub-section (2) of Section 117A. It reads “any decision or order or direction”. If the intention was to restrict appealability to only final orders passed, and not to interim orders/directions, where was the need to include the word “any”? and where was the need to include the words “decision or order or direction”?

Clearly, the conclusion tilts towards appealability of interim orders before the IPAB.

Not just that, one must also take into account the fundamentals of writ jurisprudence. In a writ jurisdiction, the Court’s power to deal with the merits of the case is very limited. This is because in a writ proceeding, the Court is entitled to reverse the decision only if there is an egregious error which is against the express provisions of the law or canons of natural justice.

In other words, a Court does not sit in appeal over the findings on merits in flexing its writ jurisdiction. Therefore, to file a writ against an interim order of the controller to challenge his findings on merits, would be impermissible under the law.

Consequently, the plausible conclusion is that the IPAB has to entertain an appeal from interim orders passed by the Controller in circumstances envisaged under Section 117A(2).

Another way of looking at it could be that the very constitution of the IPAB as an appellate authority would be rendered otiose if parties start approaching High Courts against interim orders of the Controller.