Great Expectations from the New Year: A Reasoned Approach to the Law

Since 2011 is on its way out and all of us are eager to usher in the New Year, each of us for our own reasons, I thought I might set the tone for the coming year with a few “judicial” expectations, which resonate with at least a non-negligible cross-section of the Indian Patent Bar.

For quite some time now, Indian Patent Practice has been largely driven by consensus among practitioners, which in turn is born from experience with “Office Practice”. However, this is precisely the sore point because there is a dire need for interpretational guidance from Courts, the IPAB, and Patent Offices in that order because power/authority, more than logic, seems to dictate the course of judgments/decisions.

What the Courts hold, the IPAB follows, and the Patent Office applies. Therefore, for me, it is now the duty of Courts to use every opportunity that cases before them present, to interpret and clarify the law. That said, Courts are bound by a few rules which flow from our system of adversarial jurisprudence:

1. Courts are not at liberty to express their views on all and sundry unless the issue is relevant to a case at hand;

2. Even in issues which are relevant, Courts are bound by issues raised, submissions made by parties on those issues and the material placed before Courts to substantiate the submissions.

What comes out of this? To me, what this means is that it is the duty of parties to assist Courts to the best of their abilities, which is not necessarily antithetical to protecting their interests in a case. But then, more than parties, it is for counsels to put their best foot forward every time they put forth their Client's point of view on the law before Courts (This is not to be construed as taking a patronizing tone).

This is all the more necessary because Indian Courts still do not have a hang of Patent Law, so it falls on the able shoulders of the Indian Patent Bar to assist Courts on the subject and the law. Some of the best judgments are the product, not of the efforts of the Bench, but of the diligence, industry and legal acumen displayed by members of the Bar.

Specifically, is there something that we can do? For starters, I think what the Bench and the Bar can and must do is to stop quoting and citing precedents ad nauseam without explaining the relevance of precedents to the facts of a case.

Precedents are created, not by parroting precedents, but only by original thinking. Fastidious adherence to precedents will only create a tautologous monster, which may ultimately come back to haunt us and bite our celestial rumps!

In this regard, following are the observations of the Supreme Court in Haryana FinancialCorporation v. Jagadamba Oil Mills (AIR2002SC834):

“19. Courts should not place reliance on decisions without discussing as to how the factual situation fits in with the fact situation of the decision on which reliance is placed. Observations of Courts are not to be read as Euclid's theorems, nor as provisions of the statute. These observations must be read in the context in which they appear. Judgments of courts are not to be construed as statutes. 

To interpret words, phrases and provisions of a statute, it may become necessary for judge to embark into lengthy discussions but the discussion is meant to explain and not to define. Judges interpret statutes, they do not interpret judgments. They interpret words of statutes, their words are not to be interpreted as statutes.

21. Circumstantial flexibility, one additional or different fact may make a world of difference between conclusions in two cases. Disposal of cases by blindly placing reliance on a decision is not proper.

22. The following words of Lord Denning in the matter of applying precedents have become locus classicus:

"Each case depends on its own facts and a close similarity between one case and another is not enough because even a single significant detail may alter the entire aspect. In deciding such cases, one should avoid the temptation to decide cases (as said by Cordozo) by matching the colour of one case against the colour of another. To decide, therefore, on which side of the line a case falls, the broad resemblance to another case is not at all decisive."

XXX XXX XXX

"Precedent should be followed only so far as it marks the path of justice, but you must cut the dead wood and trim off the side branches else you will find yourself lost in thickets and branches. My plea is to keep the path to justice clear of obstructions which could impede it."

I couldn’t have said it better than the blessed Lord Denning! These words must guide us every time we find ourselves short of authorities to buttress our cases.

After all, “legal research” is not merely pulling out a judgment from a database and quoting from it without internalizing its essence. Legal research, for me, is to be able to use one’s common sense, the fundamentals of the subject, the wording of the statute, facts of the case and fairness to chart the course of logic. How else are precedents created?

I don’t intend to pontificate, the idea is to merely voice what most of us must have thought at some point or the other. Also, aren’t we just tired of looking for precedential reinforcements from either sides of the Atlantic? Don’t we look forward to the day when we cite Indian decisions? Or better, don’t we look forward to the day when Indian decisions are cited on either sides of the Atlantic? I, for one, certainly do!

Wishful thinking some might say, Optimism is my way of putting it (Please check out the Video Links at the top of the page). I have no qualms saying it’s a very real scenario which is not too far away in the future, provided we work for and  towards it.

On this note, on behalf of the blog, Here’s Wishing Everyone (not just our readers) a Happy and Prosperous New Year!

IPAB’s Yahoo Order: Analysis- II

This post continues from the last post analyzing the IPAB’s order on Yahoo’s patent application. In the last post, I had dealt with one of the prior art documents cited against Yahoo (D9-“Sullivan Article”). I had even disagreed with the IPAB’s logic on the issue of how novelty must be assessed.

In this post, I deal with (1) the other prior art document- D10, which is a set of responses on the applicant’s own website to FAQs relating to the invention, and (2) Section 3(k).

Anticipation- Section 32 of the Patents Act

The responses given to the FAQs, according to the Controller, described the invention in sufficient detail so as to anticipate the invention.

To this, the applicant’s response was that the information disclosed in the responses was not enough for a practitioner of the art to replicate or work the invention. Assuming that the information was sufficient, the alternative argument of the applicant was that it was entitled to protection under Section 32 of the Act, which exempts anticipation by public working which extends to a period of 12 months before the date of priority.

The above exemption is, however, restricted only to instances which may amount to use of the invention for “reasonable trial”.

My Thoughts

I am not sure if the reliance placed on Section 32 by the applicant was correct. I say so because Section 32 relates to anticipation by public working of the invention, but does not extend to plain and simple publication of information related to the invention.

This is clearly borne out from the wording of the provision since it refers to effecting working of the invention in public for the purpose of reasonable trial. The purpose underlying it is to exempt unavoidable public working of inventions which cannot be worked in private, let’s say a real-time trial of a turbine used in hydel power production. Therefore, for me, the applicant’s argument that the information in the responses to the FAQs too amounted to “anticipation by public working”, is legally untenable.

Provisions in Chapter VI, which deal with exemptions to anticipation, must be interpreted strictly since these are negative definitions as to what does not amount to anticipation. For instance, there’s a difference between saying that the number of arbitrators must be odd, and that the number of arbitrators must never be even. The second statement acts as a stronger/sterner caveat against appointing even number of arbitrators.

Similarly, when Section 34 states that other than instances covered by Sections 29-33, there are no other exceptions to anticipation, it requires us to interpret the windows provided under Sections 29-33 in a very restricted/limited fashion. Ergo, there is no scope for including publication of information related to an invention under Section 32 of the Act.

The Controller’s Reasoning

The Controller, instead of questioning the applicant’s very reliance on Section 32, adopted an approach based on priority date. His argument went something like this:

A. The information in the responses to the FAQs was available three months before the date of priority, which meant that the invention must have been worked prior to the information being disclosed in the responses.

B. The Controller then assumes that such working of the invention must be “much earlier” to the priority date, and hence beyond the 12-month period.

C. Consequently, protection could not be sought by the applicant under Section 32

Needless to state, the argument is vague for there is no basis for the Controller’s assumption that the invention must have been necessarily worked before the 12-month grace period. The IPAB too found this approach vague and set aside the finding of the Controller of this issue. This could have been avoided if the Controller had questioned the very basis of the applicant’s (flawed) reliance on Section 32 of the Act.

Section 3(k)

Here’s an opening observation by the IPAB on the issue:

“Finally we come to the ground of non-patentability under S. 3 (k). If the claimed subject matter is not an invention or if the invention is not patentable or if it is excluded by S.3 of the Act, then none of the other objections need to be considered. Only if the claimed subject matter is a patentable invention we need to look at anticipation, obviousness etc.”

On one hand the IPAB takes the above position, and on the other, with respect to the issue of novelty, the IPAB took the view that the Controller erred in excluding ineligible subject-matter from the claims before comparing it with prior art to assess novelty of the invention! (I had discussed this in my last post on the Order)

What exactly is the invention claimed by Yahoo?

“A tool enabling advertisers to target web search terms relevant to their business and to pinpoint the placement of their web site description within the search results provides a powerful advantage to businesses and others seeking to increase their web exposure.”

“The web site promoter first selects a search term comprising one or more keywords relevant to the content of the web site to be listed. The web site promoter influences the rank position for the search listing through an ongoing online competitive bidding process with other web site promoters. The bidding process occurs when an advertiser enters a new bid amount for an existing search listing or enters a bid amount for a new search listing. Preferably, the promoter’s bid is then processed in real time. This bid amount is compared with all other bid amounts from other promoters for the same search term, and generates new rank values for all search listings having that search term. The rank value determines the position where the promoter’s web site description will appear on the search results list page that is generated when the search term is entered into the query box on the search engine by a searcher. A higher bid will result in a higher rank value and a more advantageous placement, which is preferably near the beginning of the search results list page. Preferably, the quantity used in the competitive bidding process is a money amount that the web site promoter will pay to an owner of the Internet search engine each time the advertiser’s web site is referred by the search engine. Most preferably, this money amount will be deducted from an account balance that is retained in the promoter’s account for each time the promoter’s web site is referred by the search engine.”

The core of the invention deals with a method of connecting the keyword entered by a user with the results stored in the database of the search engine and deciding the placement of a search result relating to a particular website based on the bid placed by the owner of the website for successful “click-throughs” (clicks that translate to visits to the website itself). In short, ranking of a search result was based on the bid amount placed by the owner of a website.

Obviously, an algorithm connects these factors to decide the ranking of a search result. If so, should the invention be approached as an algorithm or a business method? I am inclined to see the application more as an algorithm, as opposed to a means of doing business. However, the IPAB chose to characterize the application as a business method, without clearly giving its reasons for doing so.

The IPAB cites excerpts from decisions from the US and the EPO which speak of the advisability or otherwise of grant of patents to business methods. However, there is no attempt on the part of the IPAB to define a business method, or at the very least, to explain why the application claimed constitutes a business method. The only reasons it offers are as follows:

“However, the above extracts from the European Patent Office order only show that the claimed invention is only a method of doing business which is, the advertisers pay for better placement and the bid is registered and the amount debited from the advertiser’s account according to the bid made. Even if we use the description employed by the learned counsel for the appellant that it is an auction combined with the Yellow Pages, all happening in real time it is still a method of doing business, by providing service to advertisers who want to have the prime place in the selected page and for which they bid and their account is debited accordingly. In doing so the service product seeks to place the facts (bid amount) or advertisement (information) in hierarchy based on the payments made. This is nothing but doing the advertisement business electronically. Even the technical advance that is claimed over the existing art is only an improvement in the method of doing business and S.3(k) is clear that business method cannot be patented, the fact that there is an advance has not improved the case.  Therefore, we affirm that this ground alone is sufficient to reject the present application.”

Concluding Thoughts

On the whole, the decision of the IPAB leaves much to be desired in terms of flow of logic and analytical rigour/sharpness. The Board seems to have proceeded on a visceral feel that since the application smelt like and appeared as a business method, it must obviously taste like one. This, the IPAB concludes without so much as attempting to taste and digest the invention.

This clearly shows that it is not enough to cite foreign precedents; what is important is the original application of principles set out in the precedents to the facts of a given case. 

This case presented the IPAB with a great opportunity to clarify several aspects of the law such as assessing novelty, import of Section 32 and distinguishing a business method from an algorithm. That opportunity appears to have been squandered...lets hope the standard of reasoning in our decisions evolves and elevates with passage of time.

IPAB’s Yahoo Order: Analysis- I

This post continues from the last post on the IPAB order on Yahoo's patent application.
Brief Facts

Title of the Invention: System and Method for influencing a position on a search result listing generated by a computer network search engine

Date of Filing: May 12, 2004 (with a priority date of May 28, 1999 from a US application)

Date of Issuance of FER: December 30, 2004

I haven’t been able to lay my hands on the complete specification, but from what I could glean from the order, the invention apparently relates to “competitive bidding”. The Patent Office raised 17 objections in the FER, of which the primary objections were:

A. Ineligibility of subject-matter under Section 3(k) of the Patents Act

B. Insufficient distinctiveness of Claims 62 and 63

To meet the objections, the applicant submitted new set of claims, which among other things, included “technical subject-matter” to overcome the 3(k) objection. However, objections were raised again citing raising Section 3(k) and lack of novelty. To this the applicant responded by deleting 25 “apparatus claims”.

It appears that on June 9, 2006, the Patent Office found the application in order for grant. Unfortunately for the applicant, a pre-grant opposition was filed on October 22, 2007 which was decided against the applicant on March 30, 2009. The pre-grant rejection was based on ineligibility of subject-matter and lack of novelty (anticipation).

The applicant appealed to the IPAB against the pre-grant rejection.

Novelty

Two prior art documents were cited against the applicant on the issue of novelty. The first was an article titled “Search Engine Report” by Danny Sullivan (referred to as D9 in the order) and the second was a copy of Frequently Asked Questions (FAQs) from the applicant’s own website (referred to as D10).

The Sullivan article basically describes a method of getting better placements in the results lists of search engines, which involves payment by the entity seeking better placements. The higher the payment/bid, the better is the placement in the search results. The placement of searches is done by entities/sites which function as referral sites for an entity which seeks more eyeballs.

For instance, GoTo.com could act as a referral site for Reliance and ensure that search results relating to Reliance are placed better, subject to the payment of a certain fee by Reliance for every successful click.

In the pre-grant proceedings, the above-described Sullivan article was deemed as anticipating the application of the applicant. However, this finding was arrived at by the Controller after having discarded certain features claimed in the patent application. The features were discarded on grounds that they did not constitute “technical subject matter” and were hence ineligible.

The IPAB took the view that when dealing with the issue of novelty, the Controller ought to have simply compared the features described in the Sullivan article with the features claimed in the patent application without looking into the issue of eligibility of claimed subject-matter. The IPAB therefore took the view that the Controller’s analysis with respect to the Sullivan article was flawed.

My Thoughts

The approach to novelty that the IPAB seems to advocate raises an important question, which was dealt with in the much-discussed Symbian v. Controller of Patents decision, which I had discussed elsewhere quite some time ago. The question that must be asked is as follows:

In ascertaining novelty, must the claimed invention be compared as it is with prior art? Or must only eligible/patentable subject matter be compared with prior art?

The Controller excluded non-technical subject matter before evaluating the invention for novelty against the prior art. On the other hand, the IPAB took the view that the entire invention must be compared with prior art without filtering the claim for ineligible subject-matter.

The Aerotel test (in the UK) requires identification of actual contribution made, and examination of its eligibility as patentable subject-matter as the primary step in scrutinizing a patent. To me, this makes sense because criteria such as novelty, non-obviousness and industrial applicability are to be touched upon only after eligibility is satisfied in the first place.

Eligibility is the primary threshold which must be surmounted before requisite standards of novelty and non-obviousness are met with. The analysis of the contribution of an invention to the state of art is strictly restricted only to those aspects of the invention which fall within the scope of permissible/patentable/eligible subject-matter.

Therefore, was it incorrect on the Controller’s part to exclude non-technical/ineligible subject-matter from the claimed invention, before evaluating it for novelty? I don’t think so...

Consequently, I do not agree with the IPAB’s approach to novelty, assuming that the result was ultimately the right one.

More to come in the next post. 

Stale News: IPAB Dismisses Yahoo’s Appeal from Pre-Grant Patent Rejection

In a 32-page order dated December 8, 2011, the IPAB dismissed the appeal filed by Yahoo Inc against a pre-grant opposition order in which Yahoo's application for a patent on “System and Method for Influencing a Position on a Search Result Listing Generated by a Computer Network Search Engine” was rejected.

The primary (and it appears the sole ground) for dismissal of the appeal was Section 3(k) of the Patents Act which bars grant of patents to computer programmes per se. We will undertake a detailed analysis of the decision shortly and welcome opinions from readers and practitioners on the decision.

I thank Ms.Sunita Sreedharan for drawing my attention to the order!

Matrix Labs v. Roche: Madras HC Rules It has No Jurisdiction

An ex parte injunction, which was granted by the Madras High Court in September 2010, was vacated by a Division Bench of the same Court on grounds that the Court did not have jurisdiction to entertain the suit.

The suit for patent infringement was filed by Roche against Matrix Labs alleging infringement of its patent 196774 on Erlotinib Hydrochloride. Roche claimed that the Madras High Court had jurisdiction over the matter for the following reasons:

A. Matrix Labs had filed a revocation petition against Roche’s patent 196774 at the IPAB in Chennai. Since the petition was filed in Chennai, the cause of action had arisen in Chennai vesting the Madras HC with jurisdiction

B. Matrix had allegedly tested the drug in clinical trials in a Chennai-based lab, and hence a part of the cause of action had arisen in Chennai.

The Division Bench rejected the first ground, and rightly so, since it was “a statutory compulsion” for every opponent to file revocation proceedings at the IPAB in Chennai. Mere filing of revocation proceedings at the IPAB, which is located in Chennai, cannot and did not vest the Madras HC with jurisdiction over the matter.

The second ground too was rejected since Roche’s allegation was based on the fact that past clinical trials of Matrix were conducted at a Chennai-based lab. However, no evidence of testing of Erlotinib in Chennai seems to have been adduced by Roche. Therefore, there was not enough evidence for the Court to conclude that a part of the cause of action had arisen within Chennai.

Assuming that tests had indeed been conducted within Chennai, this would still be squarely covered under Section 107A(a) of the Act, which deems reasonable use relating to the development and submission of information, as non-infringing (bolar exemption).

The drug Erlotinib Hydrochloride (aka TARCEVA) has already been the subject-matter of patent infringement suits filed before the High Court of Delhi. In fact, in Hoffman La Roche v. Cipla, the Delhi High Court took a prima facie view which impugned the validity of the Erlotinib patent.

I realize that according to the dicta of the Supreme Court (and principles governing equitable reliefs such as an interim injunction), prima facie views are just that- prima facie, and hence inconclusive. Be that as it may, in a regime like India where the trend is typically against grant of interim injunctions, I really am not sure why did the patentee in this case choose to try its luck in a different Court. May be it was just that- trying its luck.

One interesting side note is that the Madras HC appears open to grant of injunction in a case of threatened infringement. This is not unusual or uncommon or impermissible in other matters, but for an Indian Court to be open to such a remedy in a patent infringement suit is certainly noteworthy... 

A Strange Case of Errors

Why don’t patent offices issue examination reports well in time bearing in mind that the applicant may need time to think and respond?? Here’s a case which is not very uncommon and I am sure quite a few applicants might even relate to:

1. FER was issued in a patent application on November 15, 2007, which was returned by the original agents on record stating that the case had been transferred to another agent.

2. In March 2008, a change of address application was filed by the newly appointed agent.

3. The FER was re-issued only on October 20, 2008, i.e. just a month before the expiry of the 12-month period for putting the application in order for grant. Of course, the FER did clearly mention that the response had to be submitted on or before November 15, 2008.

4. The response to the FER was submitted by the newly appointed agent only in March 2009 (why? Did the agent expect the delay to be condoned? But then, there is no condonation possible for timelines mentioned in Rule 24B under Rule 138).

5. A hearing was held, upon request by the agents, on October 12, 2009, in which the application was finally deemed as abandoned.

A few questions that are on the top of my mind are as follows:

A. Why did it take 7 months for the Patent Office to re-issue the FER to the new agent after the change of address was submitted? At the end of the day, the applicant has suffered largely owing to the delay in re-issuance of FER.

B. How can a hearing be sought under Section 21? How did the Patent Office grant a hearing in a matter where deemed abandonment under Section 21 had already taken effect?

The short question is, does the patent office have the power to grant hearings in situations strictly covered by “automatic” provisions such as Section 21? It is obvious that there is no room for exercise of discretion under Section 21(1), unless the case falls under Section 21(3).

Simply put, the effect of deemed abandonment is set in motion the moment the 12-month period expires, with absolutely no room for interference either by the applicant or the patent office. Then, how and why was the hearing granted in this case? Although, this situation would not have arisen had the FER been issued well in time to the new agent. 

Stale News: Roche Sues DRL for Infringement of US Patent on Valcyte

Hoffman la-Roche has filed a suit against Dr.Reddy’s Labs for infringing Roche’s US patent on Valcyte. The US patent was granted in 2000. Most of our readers might know that Roche lost the post-grant opposition in India with respect to an Indian patent on the same drug.

It would be interesting to see how US standards of infringement and invalidity are applied to Valcyte. We’ll keep our readers posted on the developments in the case. 

Stale News: Delhi Courts Issue Notices to Social Networking Sites

A few days ago, a Delhi Court issued an ex parte order directing 22 social networking sites to remove derogatory content which might hurt religious sentiments.  The order was issued in a petition lodged by Mufti Aijaz Arshad Qasmi. The websites were asked to respond to the petition by yesterday i.e. December 24, 2011.

In another private complaint, another Delhi Court has issued notice to Facebook, Orkut, Google and Youtube for publicly exhibiting obscene lascivious comment.

One wonders if it’s sheer coincidence that these complaints were filed in the immediate aftermath of Kapil Sibal’s call for censorship of the internet. After all, in this country, it isn’t that difficult to plant complainants...

Policing Netizens?!?!?!

I am told that during one of India’s toughest political times, when editorials were curtailed due to an Emergency, one prolific newspaper carried Nobel laureate Rabindranath Tagore’s wonderful words:

Where the mind is without fear and the head is held high

Where knowledge is free

Where the world has not been broken up into fragments

By narrow domestic walls

Where words come out from the depth of truth

Where tireless striving stretches its arms towards perfection

Where the clear stream of reason has not lost its way

Into the dreary desert sand of dead habit

Where the mind is led forward by thee

Into ever-widening thought and action

Into that heaven of freedom, my Father, let my country awake

Recently, our Minister for Communications and Information Technology, Kapil Sibal who is also one of India’s most renowned figures in the legal fraternity, made a statement regarding policing the internet and social media. While his statements were the much heated subject of discussion in the Indian media over the course of last week, they indeed do attract one’s attention, at least for a moment or two, to look at the pros and cons of doing so, pertinently in the context of social media.

Of course as far as policing one’s parallel life on the internet goes, in my mind several issues may arise. The most prominent of these issues is the constitutionality of such policing, vis-à-vis the Freedom to Speech and Expression, guaranteed under the Constitution. Undoubtedly, as we all tweet, Facebook or share via Google+, not just do we share our lives, but these platforms have given us an opportunity to become more vocal and on several occasions, severely critical as well.

However, with the expansion of media, whereby one can “voice” one’s opinion, is the need for policing also called for? My personal opinion, which I believe is the majority opinion, is an emphatic NO. While the Constitution guarantees the Freedom to speech and expression, the same is unrestricted across the media of communication. Additionally, since Art. 19(1)(a) is a guaranteed freedom, I believe that the only action viable, if at all, would be a civil defamatory suit for libel.

Having said this, my concern runs somewhat deeper, beyond what Mr. Sibal has to say. I worry most about copyrighted content and sharing the same, particularly of videos.

If one were to consider such content, the same is being dealt with by making access to the content itself unavailable to a particular geography -just as many websites, youtube videos, online telecasts are not available to a particular ISP addressee.

However, I am unsure if the walling off content would prevent someone from “reposting” a link on an online forum. The catch here is that while a video may be unavailable in a particular geography, I may be able to access the same the moment I shift location.

On one hand, since one may consider the absence of commercial benefit to the profile hosting such content, and may advocate this use to be fair, on the other hand, the mere lack of commercial benefit shouldn’t amount to misuse. If a pay-per-view system be in place, would this form of contributory infringement come to rest? Or, since songs, et al. do speak our minds the best, more often than not, would our Freedom of Expression?!?!?

There is a new song that has become a rage amongst the Indian public, called Kolaveri di, and has had over a couple billion hits. Thanks to social media and sharing, the song has acquired the popularity that it has. Now, that was someone’s mind without fear and head held high!!!

Musings over Moral Rights

The world of Copyright, in my opinion, today best reflects the fine move that went on from Industrial to Intellectual Property, albeit in the opposite order.

Copyright, has under its wings, a wide array of creative works (not that inventions cannot have their creative side), most of which today, have undoubtedly acquired a more commercial nature than ever. However, what seems to create the fine balance between its commercial and creative characterestics, is perhaps the presence of a scheme for moral rights.

The Hegelian theory of Personality Justification, that appears to fit the mould of copyright in the best way, talks about property being an extension of one’s personality. We see that in every piece of creative work around us, thus creating room for art critics, historians, curators and so on. Perhaps the theory of Moral rights, also grew in and from the European era of Renaissance, wherein self- expression, freedom of thought and concepts akin came to life.

This having been said, the law in the United States never ceases to amaze me.

On one hand, the United States Constitution, vide Article 1, Section 8, Clause 8, empowers authors with the gift of copyright. On the other hand, the only place for moral rights appears to be in the Visual Artists Rights Act (VARA). Moral rights as outlined therein allow an author of a visual work to avoid being associated with works that are not entirely his/her own, while also preventing the defacement of their works.

However, the importance of Moral rights in the US has found some life, through judicial deliberation.

A much debated scheme of thought came by, vide the Google Book Settlement decision, rendered by Justice Denny Chin of the Southern District of New York.

While it is impossible to quote from the decision, since the thoughts of the judge are weaved throughout the judgment, the approach to moral rights is exceptionally subtle, with reference in a couple of instances as “international” rights or concerns.

I have read this forty eight page decision, now, over a couple of times. And,to be honest, the simplicity with which Justice Chin appears to have brought about the nexus between Copyright as an Intellectual Property, the Commercialization that often drives authors, and associated concerns is a delightful read.

Non-working Isn’t a Ground of Revocation of a Patent: Why?

Section 64 of the Patents Act, which lists the grounds for revoking a patent, is exhaustive. No ground which is not mentioned in Section 64 can be used to impugn the validity of a patent. This much is obvious. But why does not Section 64 provide a ground for revocation of a patent for non-use/non-working of the patent?

The only remedies available under the Patents Act for non-working of a patent appear to be an application for compulsory license under Section 84 and an application for revocation under Section 85.

A reading of Section 85, in fact, tells us that an application for revocation under Section 85 may be made only after the expiration of 2 years from the date of the order granting the first compulsory license. It appears, under the framework of the Act, for a patent to be invalidated on grounds of non-working, it is mandatory to first apply for a compulsory license before seeking revocation under Section 85.

May be the Patents Act is not so anti-patentee after all…..

But why should an un-worked patent not be revoked directly? Why is the compulsory license route mandatory before seeking revocation of a patent for non-working? Why shouldn’t revocation be an option after three years from the date of grant? Shouldn’t an “interested person” have the option of choosing between revocation and compulsory license, instead of reaching the former after the latter? 

Isn’t Arbitration a Better Alternative for Patent Infringement Disputes?

In an earlier post, I had expressed concerns on the ability of Courts (at least in India) to do justice to patent infringement suits. 

Continuing in the same vein, I think Courts would do well to invoke powers vested in them under Section 89 of the Code of Civil Procedure to refer patent matters to arbitration cells of Courts.

Arbitration may prove to be a much more expeditious way of seeing a patent dispute through, instead of wading through the sea of formality which is characteristic of conventional Courtroom litigation. (There is nothing radical in this suggestion, this thought has been out there for quite some time now and literature on this issue abounds)

Besides, considering the fact that Indian Courts are yet to get the hang of the rudiments of patent litigation such as construction of claims before battle lines are drawn, arbitration may prove to be much more conducive a forum for the level of sophistication that patent litigation demands and deserves.  

Of course, there are several “ifs” and “buts” to this proposal. For instance, if parties to the dispute are intransigent and there do not appear to exist “elements of a settlement which may be acceptable to the parties” (a requirement of Section 89 of the CPC before matters are referred for arbitration or mediation), I am not sure if the Court may still refer the matter for arbitration.

That said, in practice, Courts do not seem to put too much stock in this requirement of “elements of a settlement” between the parties. Matters are routinely and mechanically referred for arbitration or mediation. Without commenting on the propriety of doing so, if this practice of unilaterally referring matters to mediation and arbitration cells is here to stay, Courts might as well do the same for patent matters.

Having said that, patent litigation allows Courts to clarify certain aspects of the law and provide the Patent Office, applicants and practitioners some much required judicial guidance on standards and interpretational bottlenecks. Referring matters to arbitration might affect the evolution of a patent jurisprudence which is the dire need of the hour.

On too many issues of critical importance, there’s a herd mentality, with very few enlightened souls questioning the adoption of certain practices. Litigation, in more ways than one, helps in evaluating the legality and wisdom of such practices. 

The only issue with litigation (which is THE issue) is that it lacks speed and one can never be sure if the peculiarity of patent law and the dialectics of the business of innovation are understood by Courts.

Hoping that at least some of us would explore arbitration as an option to resolve disputes, I intend to write more on arbitration in general, and its application to IP disputes. Suggestions, material and comments are welcome!

Two Patents on the Same Invention- Is There a Way Out?

Most of our readers are aware of the patent dispute (C.S.(O.S.) 740 of 2006) between Hindustan Unilever and Eureka Forbes, where it has been reported that both entities have been granted patents by the Indian Patent Office on substantially the same invention.

This matter is listed for arguments on December 20, 2011 before the High Court of Delhi. The facts in brief are as follows:

1. HUL filed for a patent on a gravity-fed water purifier system in 2002 on which a patent 198316 was granted in 2006.

2. Eureka Forbes too filed an application for a patent, subsequent to the date of filing of HUL’s application. Eureka Forbes was however granted a patent prior to the grant of HUL's patent.

3. HUL alleged that Eureka Forbes’ product infringed its patent 198316, but the latter claimed that its product was covered by its own patented invention (which is probably different from HUL’s patented invention).

What recourse does HUL have? On what grounds can Eureka Forbes’ patent be revoked? Besides claiming that its patent is earlier in time thanks to Section 45 (which relates to the date of the patent) of the Patents Act, HUL may explore Section 64(1)(b) of the Act.

Section 64(1)(b) provides a ground under which a patent grant be challenged on the basis that it was granted on the application of a person who was not entitled to apply for a patent in the first place.

Which provision of the Act deals with entitlement to apply for a patent? Section 6. Under Section 6, only a “true and first inventor” or his assignee or the legal representative of either the inventor or the assignee may apply for a patent.

“True and first inventor” has been traditionally interpreted in India to mean “first to file” (I’d like to explore this assumption sometime). This means under Section 64(1)(b), a patent may be revoked on the ground that the person who applied for it was not the first to file for a patent on the invention. If this interpretation is tenable and reasonable, this ground is an easier way of resolving the dispute, subject to both inventions being construed as identical.

It appears Section 64(1)(b) does not have an identical counterpart in Sections 25(1) and (2) which deal with pre and post-grant oppositions. That said, Section 25(1)(c) and Section 25(2)(c) come very close to the above application of Section 64(1)(b).

On a different note, one wonders why there are marked differences in grounds available under Section 25 and Section 64.

Opinions and Corrections are Welcome!

Almost Famous

In the recent past, the Delhi High Court, seems to have been flocked by cases dealing with celebrity personalities. One such case that has caught my attention, and more so has begged me to put in some thought, is the judgment dealing with Arun Jaitley’s right to use his name as a domain name, viz., Mr. Arun Jaitley vs. Network Solutions Pvt. Ltd.

To be brief about the facts, Arun Jaitley, spokesman for one of India’s leading political parties, moved to get www.arunjaitey.com registered. Facing difficulty in doing so, he sent a letter addressing Network Solutions, LLC (the registrant as revealed by a whois.net search), to which a reply was received stating that the said domain name was already taken. 

An offer to purchase the said domain through Network solution’s Certified Offer Service was also made. However, on scouting around a bit, Mr. Jaitley discovered that the website was “Pending Deletion”, since it had not been renewed by the previous owner.

While I agree with the final outcome of the case, deciding that Arun Jaitley should be the rightful regstrant of the domain name, I am somewhat unconvinced by the manner in which the law of passing off was applied.

To cut a long story short, the judgment relies on decisions dealing in the applicability of trade mark law in the sphere of domain names, primarily keeping focus on Satyam Infoway Ltd. Vs. Sifynet Solutions Pvt. Ltd. To describe these decisions in the broad sense, these decisions apply trademark law to afford protection to domain names that were being infringed vide the use of deceptive URLs.

In my view, the application of these decisions to the case is somewhat flawed. As I read the judicially deliberated law protecting domain names, the law on trademarks is applied to domain names owing to the commercial nature facilitated by both. Where a domain name does not refer to a trade mark per se, I think the tennets of the Uniform Domain Name Resolution Policy should be relied upon, as against an extensive reliance on trade mark law, as in this decision.

As averred by his counsel, Arun Jaitley is a name that has acquired fame and reputation, as one of India’s most renowned lawyers. However, now that he is a full time politician, I wonder if he could still project his name to have a trade mark sort of status. In my view, the only reason to adopt a passing off sort of argument would be its judicially adopted straight jacket treatment vis-a-vis cyberlaw.

Further, while our law does recognize a common law right in a trade mark, however, from a reading of the Act, a name that acquires a trade mark status, whether under common law, or by registration based on acquired distinctiveness, the same must be used in relation to goods and services. 

Additionally, acquired distinctiveness is only a means to acquire a trademark registration, but the Act nowhere purports that every name, personality or term that has acquired a secondary significance to it, should necessarily be protected as a Trade Mark.

This case in my view is a case of false and misleading description, which per the Indian Trade Marks Act, does not cover individual personalities. This is a stark contrast to the Lanham Act, that covers the protection of personalities as well.

Further, I think this case makes one for a tortious claim of misrepresentation.

Although the law of passing off has its roots in the law of torts, and a case such as this could only be best described by using the term “passing off”, however, I strongly feel that in this instance, delinking from the law of trade marks, and the adoption of a direct tort related approach was necessitated.