Snippet: IPO’s Public Notice on Amendment of PCT NP applications Challenged

On July 18 2012, I filed a PIL W.P.(C) 4427 of 2012, J.Sai Deepak v. Union of India, challenging the Public Notice issued by the Indian Patent Office prohibiting amendment of National Phase PCT applications before they enter the National Phase. The said PIL was listed before the Chief Justice of the High Court of Delhi today. My submissions on the maintainability of the PIL were heard and notice was issued to the DIPP (since the IPO falls under the DIPP) to respond to the PIL. The next date before the Court is August 29, 2012.

Update on PIL on Section 107A(b)

Last month, I had filed a PIL challenging a circular issued by the Central Board of Excise and Customs (CBEC) before the Chief Justice of the High Court of Delhi. The High Court had given the CBEC (Respondent No.1) and the DIPP (Respondent No.2) 6 weeks from May 23, 2012 to file their responses to my PIL. The said period ended on July 4, 2012, subsequent to which I filed an application for Stay of the CBEC Circular. Last evening, I received the response of the DIPP. I have not received the response of the CBEC.

The matter was listed for arguments today, however owing to the Court being held up with arguments in the Akbarabadi Mosque dispute, the PIL could not be heard. The next date before the Court in the PIL is August 22, 2012. 

“Alternative” Thoughts on Innovation

Warning: This post does not have a shred of legal analysis. These are but random thoughts on the non-legal aspects of innovation which, to me, are much more important than rumination on the protection extended to innovation. Therefore, read at your own risk because this post may not be of value to you (not that other posts are necessarily of value either), and may even put you off.

Too often when we discuss innovation, we instinctively look up to the West or Far East or Israel, and this is certainly not without reason. After all, almost everything that is of use to us on a daily basis is a product of innovation outside this country. Apart from the reasons that meet the eye, I try to look for relatively “obscure” reasons, some of which even border on the occult.

At the expense of being branded superstitious or “old-school”, I dare say I have a passing interest in planetary movements and their relationship to human behaviour, the politically incorrect word for it being “astrology”. Quite a few self-professed “agnostics”, “atheists” and “rationalists” repose faith in this branch of study in private, which they would never admit to in public even if held at gun point. Fortunately, I don’t subscribe to that kind of hypocrisy J

The psychological aspects of this subject make it an interesting tool to observe people around us at a microcosmic level and the macrocosmic level, say general traits of a nation.

A few months ago, while I was waiting to board a flight, I was reading up a random write-up on the meaning of the word “retrograde”, and its connotations when used in an astrological context, specifically “retrograde mercury”. (“Mercury” is referred to as “Budha” in the Indian school of astrology and is the planet which governs intellect). One thing led to another and I found myself reading the traits of “Bhadra Yog” and “Budha Aditya Yog”, both of which refer to two different positions/combinations of Mercury in the birth chart.

What I read got me thinking on certain lesser discussed aspects of the dialectics of innovation. Apparently, persons with “Bhadra Yog” make for great statesmen, philosophers, theoreticians and thinkers; simply put, these are people whose destinies lie outside of the strictly vocational pursuits such as engineering and the like professions, and whose key strength lies in harnessing their inner thoughts. Whereas persons with “Budha-Aditya Yog”/”Mercury-Sun combination” are those with excellent skill and proficiency in professions which involve making/manufacturing or harnessing the forces of nature.

The write-up further said that India seems to have predominantly produced people with a “Bhadra Yog” with the West producing those with the “Budha-Aditya” combination. Not that this is a conclusive or what’s the word..ah yes.. “rational” explanation for our poor performance in the field of innovation, but I’d like to take a strand out of this observation and extend it.

Our philosophical leanings have often been interpreted as containing unmistakable undertones of nihilism and “the Universe shall take care of itself” approach. The fact could be that we may have chosen to conveniently focus on those aspects of our heritage which support a passive approach to situations, in the process glossing over those teachings which fervently urge us to take matters in our own hands and find solutions to our problems. This probably explains our dulled proactive and creative instincts, which in an increasingly competitive world makes us misfits, and certainly rules us out as real contenders to the Big Boys Club of developed nations.

Also, even when we choose to cast aside our complacence and try to sharpen our survival skills to stay in the race for development, we end up looking up to the West or other nations for inspiration, in the process turning a complete blind eye to shining examples of excellence and perfection which abound around us and within us. There is nothing wrong in learning from anyone, but to not be able to indigenize, and hence internalize, makes mere aping simians out of us.

One of the keys to originality is to learn the art of “naturalizing”/indigenizing an alien idea to the extent that its foreign roots are no more visible, and to yet preserve its potency. This is how some of our best music composers and home-grown geniuses like Ilayaraaja and R.D.Burman made Western tunes their own. The proof of their genius lies in the fact that we don’t use pejorative terms like “Copycats” for them, which we reserve for the current crop of music directors.

As for shining examples of perfection around us, I can’t think of a better example than the hoary tradition of Indian Classical music, Carnatic and Hindustani. To attain a certain degree of proficiency in the ocean that is Indian Classical music, it takes years and years of practice and discipline. This has not deterred us from producing one stalwart after another, who has captured the hearts and minds of music lovers across the globe. This proves that we do have what it takes to master sublime forms of knowledge which demand absolute and total surrender. If so, why do we struggle so much to raise the bar when it comes to innovation? I will not proffer any answers, but will leave it to the readers to mull over the issue.

The Duel between Well-Known marks and the Standard they Represent

As I was drafting a set of pleadings this week, a question came to mind-

Say a mark X has become extremely well-known , such that it is a symbol  of a high quality multi-purpose product that finds application in various industries.  Mark X now moves against Mark XA in a contentious proceeding, such as an opposition. Can Mark X object to XA on the ground that XA in fact misrepresents a certain kind, quality, etc. that the mark X is symbolic of?

The objection I have detailed above, is under S. 9(1)(b) of the Trade Marks Act, 1999, as an absolute ground of refusal to registration of a mark.

One vehement view that came out of an informal discussion was that making such an argument would attract an objection of genericism to the mark X itself. However, I hold a slightly different opinion.

I think, the moment a mark is well-known, all other objections somewhat fade out. In other words, if a mark is so well-known to become symbolic of a certain quality, any other mark that is deceptively similar, would fall in the ambit of S. 9 (1)(b).

Moreover, while Section 9(1)(b) is an absolute ground of refusal, covering various aspects relating to lack of distinctiveness, the fact that a mark is extremely well known, such that it is symbolic of a certain stature, in many ways does append “acquired distinctiveness” to the mark. As well established, distinctiveness attributed to a mark may be either inherent or acquired.

I am not convinced that a well-known mark may not be able to adduce the ground of S. 9 (1)(b) to establish its case. The fact that a mark is well-known, well-protected, and so long as the proprietor of the mark has undertaken every possible effort to prevent the mark from becoming a generic term, to my eyes, such ground must be available.

On the other hand, am sure the opinion is, that if a mark has become symbolic of a standard, it must fall into the public domain, for anyone meeting those standards to use. My reply to that is, wouldn’t such allowable use, result in giving and using an implied naked license, which by itself is voidable (even if not void)??

It must be appreciated that the concept of a well-known trademark arose through the law of passing off and was later incorporated under relative grounds of refusal. Well-known marks, in my view, having acquired immense distinctiveness, must be allowed to take advantage of what they stand for, i.e. the quality and stature they command, and S. 9(1)(b) be allowed to move, as a ground during contentious proceedings.

Scope of Amendment of Patent Applications

Amendment of patent applications is governed by Chapter X of the Act, specifically Sections 57 to 59 of the Act. 

Section 57(1) of the Act clarifies that amendment to the complete specification may be undertaken before and after the grant of the patent. What exactly is permitted by way of an amendment is specifically dealt with by Section 59 of the Act.

In understanding this, attention must be paid to Section 59(1) of the Act whose language appears to be circuitous, but on a careful reading reveals its true import. According to Section 59(1), only incorporation of an actual fact by way of a disclaimer, correction or explanation may be permitted in an amendment to the complete specification.  Further, the additional conditions that the amendment must satisfy are that:

(1)    the amended specification must still be disclosed in substance in the un-amended specification; and

(2)    the scope of claims in the amended specification must fall wholly within the scope of the claims of the un-amended specification. The critical point to be noted is that, in understanding the scope of claims in the amended specification, regard must be had to the scope of claims in the originally un-amended specification, and not to the disclosure itself. Therefore, simply put, claims must be compared to claims when an amendment is undertaken in light of their respective specifications.

Both the above listed conditions are conjunctive in nature, and therefore, both must be satisfied by every amendment of the specification undertaken by the patent applicant.

The question that now arises is, do Sections 57 to 59 apply to amendments undertaken by the applicant in response to objections raised in the examination report by the Controller during prosecution of the application? The answer to this lies in Sub-Section 6 of Section 57, which clearly states that the provisions of Section 57 shall be without prejudice to the right of the applicant to amend his specification to comply with the directions of the Controller issued before the grant of a patent.

Guest Post: PCT National Phase Applications – No Amendments at the time of filing at IPO

A well-wisher from a prominent IP law firm has written the following guest post on the recently issued Circular by the IPO on July 2, 2012 with respect to National Phase PCT Applications. Below is the guest post:

The new Controller General of Patents, Mr. Chaitanya Prasad has issued a Circular with regard to the handling of PCT National Phase applications entering India. The Circular dated July 2, 2012 can be accessed here.

According to the instructions contained therein, the Indian National Phase application PCT application needs to be identical with the published PCT application. The premise given in this regard is that IPO wants to simplify the filing procedure.

The above guidelines have in any way been included in the said Circular as a clarification to the earlier guidelines in the Patent Manual of the IPO which states:

• For the National Phase Application, the title, description, drawings, abstract and claims as filed with the International Application under PCT shall be taken as the Complete Specification [Section10(4A)].
• The applicant may make a request to the Controller for amendment of the complete specification which was filed with the National Phase Application, as a separate request in Form-13, along with the application.

To clarify the last point, the present Circular says that “It is clarified that the IPO does not allow an applicant to amend the specification or the related documents before he actually enters National Phase in India”.

Putting two and two together, what this means is that no amendments can be carried out in the National Phase application, not withstanding any unpatentable subject matter or any noticeable error which would otherwise need a correction, at the time of entering India. Ditto in cases where there is a change in ownership and PCT/IB/306 has not yet been issued.

However, if the applicant wishes to carry out any amendments, he can do so only by way of filing a Form 13/Form 6 along with the necessary fees (even along with the application). Needless to say, the guidelines simply reek of intent to increase Form 13/Form 6 filings and in turn the revenue for the IPO.

In the past, an applicant would simply enter India with an amended set of claims deleting claims which are otherwise unpatentable, thus saving considerable costs. Moreover, if some error had occurred in the published PCT application, they would file the corrected application in India again to save duplicity of efforts and costs.

What is more disturbing is that in light of the new instructions, the applicants will have to pay for claims which may be prima facie unpatentable in India only to have them removed at the time of prosecution. In majority of pharma and biotech cases as well as some software based inventions, the applicant may wish to delete certain claims at the time of filing itself, knowing well the prohibitions under section 3.

The new circular prohibits any such activity and puts the applicants in a double jeopardy – one, they have to pay up for claims containing subject matter otherwise unpatentable in India, and two – those claims will eventually have to be deleted during prosecution.