The Demanding Mistress

Evaluating Substantiality

2012-03-05T22:28:00.000+05:30

Sai indeed has raised an interesting question in his post- what is substantial enough to make a case for copyright infringement?

I will attempt to answer this question, in the context of Chanakya’s Chant. Am sure readers will appreciate that it is often easier to answer questions, when one uses a live example!). For starters, I agree the book is an awesome read. However, I would like to take a look at the situation from a somewhat different perspective..

As I see, the prolific use of quotes in the book, can be compared to a sort of compilation. One has learnt from the US Supreme Court decision in Feist, that the modicum of creativity required in a work of authorship, to be copyright eligible, is minimal.

In other words, what I am attempting to say is that it is possible to look at what Sanghi did, to be in fact a weave/compilation of perhaps, his favourite quotes, into an altogether different historical setting, an attempt, which (in my humble opinion) is extremely creative in fashion.

I am not sure if what I say above holds good. Let me try to substantiate that by layering it with another line of thought.

We all know that copyright is an exclusive right over the expression of an idea. In other words, the expression describes the idea. If a known expression is picked up (say Oh My God! From FRIENDS) and used in a distinct set up, with a different plot, I think the expression, would be inextricably linked to the new idea.

In such a scenario, if a couple of lines commonly used, were to be taken and looked at, they perhaps, would be associated with multiple scripts. Just because they have been used again in a different context, may not necessarily mean that they are infringing the copyright subsisting in the previous work. This in my view, is especially true, since copyright subsists in a work, and not in an “extract” from a work.

Coming to the point on fair dealing, the test of fair dealing under S. 52 must be applied before determining Infringement. As Sai rightly pointed out, “criticism” is covered as an exception there under.

But, to answer his question, I believe that praise would also be included under the ambit of “criticism”, especially because,criticism is not merely understood to be a negative opinion, but is in fact an opinion rendered by someone with knowledge or expertise in the field, and whose opinion on a particular work, may give rise to a positive or negative opinion about it. With this in mind, I think an ode or tribute would definitely qualify as fair dealing.

Further, to answer the question of substantiality of the work, I think the Folsom v. Marsh test used to determine fair use proves useful. The four factor test, which has been incorporated in the Indian jurisprudence, takes the following into account:

1. the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

2. the nature of the copyrighted work;

3. the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

4. the effect of the use upon the potential market for or value of the copyrighted work.

Let me attempt applying these to the Chanakya’s Chant case:

1. Yes, Chanakya’s Chant is a work for commercial gains. The purpose and character could perhaps be said to be descriptive of a character’s response.

2. The nature of the copyrighted work is literary

3. The amount and substantiality of the portion in relation to the original work, is miniscule- few dialogues, as compared to the whole book

4. Effect on the commercial value of the copyrighted work –negligible. I don’t think the sales of any of the works whose dialogues/quotes have been referenced would be affected by Sanghi’s use.

If at all any, the only cause of action that the authors have against Sanghi's use, is one of “violation of moral rights”. Under S. 57 dealing in Author's Special Rights, they would have to make out a case showing that either (a) there is a distortion, mutilation or other modification of the said work; or (b) that an action prejudicial to his honour or reputation has been taken.

Having said all of this, mostly on impulse, I think Sanghi played it safe by giving due credit to the authors of the quotes. Whether his use is decided to be fair or not, he at least cannot be accused of blatant plagiarism!

Copyright Infringement: How is "Substantiality" to be Assessed?

2012-03-05T12:32:00.003+05:30

The last few days I was reading a book by Ashwin Sanghi titled “Chanakya’s Chant”. The book is a page-turner and is certainly worth a read.

The entire book is peppered with quotable quotes of various icons from history, which are conveyed through the central character of the book, namely Chanakya.

At the end of the book, the author has been honest enough to attribute the quotes to their original authors. However, this, for me, posed an interesting question relating to the law of copyrights.

The quotes have not been “cited” by the author in the book. In other words, the quotes have not been referenced by way of foot-notes. Instead, they have been woven seamlessly in the book and are spoken by the central character of the book as and when the occasion justifies the use of the quote.

If attribution to the original authors of the quotes had been absent, a reader would have got the impression that the quotes/witticisms were originally spoken by Chanakya (despite the fact that the book is marketed as a work of fiction).

The question here is- despite attribution, does the use of the quotes in the manner in which they have been used in Ashwin Sanghi’s book constitute copyright infringement of the prior published original copyrighted work in which the quotes were originally used (if they indeed form part of copyrighted works)? If yes, can attribution to original authors/works dilute the allegation of infringement?

In answering these questions, it is first necessary to understand the interplay between Sections 14 and 52 of the Copyright Act. Section 14 enumerates the bundle of rights available to a copyright owner and Section 52 provides exceptions to infringement.

For an act to constitute infringement, there must be a right envisaged under Section 14 which is capable of being infringed, and there must not be an exception under Section 52 which offsets the allegation of infringement.

I am proceeding under the assumption that no consent has been sought from the copyright owners of the original work.

In the absence of consent from the copyright owners, is it possible to treat Sanghi’s use of the quotes as “reproduction and publication” amounting to infringement? Or does the question of “substantiality” need to be addressed when the issue of “reproduction” is analysed?

Sometimes, in instances like these, the human tendency is to look at the popularity of the quote to decide the issue of infringement. For example, if a book were to reproduce “I’ll make him an offer he can't refuse”, we immediately associate it with Mario Puzo’s immortal work “The Godfather” and peremptorily conclude that the reproduction of the quote/line amounts to infringement.

Besides such a conclusion being biased, the analysis is strictly not a copyright-based analysis, it becomes one which has trademark undertones to it. To ascertain infringement of copyright, the enquiry must restrict itself to the requirements of copyright vestation and the bundle of rights that constitute a copyright. Consequently, is there a justification to use a “popularity” argument to assess substantiality of reproduction? If yes, then the issue turns on the quality of the portions reproduced.

That said, if quality is not decisive in vesting copyright in a work, why should it play a role in making a case for infringement?

Let me restate this argument- if a few paragraphs of a book, which are not necessarily seminal in terms of quality, are reproduced in another book, would we approach the issue of infringement from a qualitative standpoint? In most cases the answer would be “No”. We would go by simpliciter reproduction to establish copyright infringement.

Why should the approach be any different for a quote or a line? By using quality-based arguments, are we trying to fill the quantitative voids? Is this permissible and would this be true to the fundamentals of copyright jurisprudence?

Besides the above arguments, is it possible for Sanghi to take the defense that the quotes belong to the annals of history and popular lore, and therefore, there can no copyright in them? or could he argue that his use would amount to an ode or tribute to these quotes through a fictional character in his work? Is an ode/tribute a defense under Section 52?

I’d love to hear from our readers on this issue- my co-blogger Ms.Divya Subramanian will also contribute her two pence to this discussion.

The Conundrum of Bifurcated Patent Litigation: A Few Thoughts More

2012-02-26T14:29:00.002+05:30

In a few earlier posts, I had shared my thoughts on bifurcated patent litigation, but there is one aspect which I did not touch upon. In bifurcated patent litigation, one forum is seized with the issue of patent infringement and the other with the issue of patent validity. This creates a few more practical difficulties which I did not deal with in my earlier posts.

One such difficulty is that the court, which has to decide on the issue of infringement, has to also comment on the issue of credible challenge posed to the validity of the patent by the defendant. If the Court does indeed form an opinion on patent validity, even if prime facie and inconclusive, it is bound to affect the objectivity with which the IPAB approaches the issue of patent validity.

It is possible for the defendant/applicant for revocation of the patent, to invite the IPAB to draw adverse inferences against the patent on the basis of the court’s observations with respect to the issue of credible challenge. This could and ought to be avoided, however, if the IPAB as a matter of practice recognises that its jurisdiction on the issue of validity is independent and ought not to be affected by any observation the court makes on the issue.

That said, if the patentee’s stance before the court itself creates an estoppel, the IPAB would be well within its rights to take cognizance of such stance. To avoid such pitfalls, it would help if there’s a single forum which decides both validity and infringement, preferably a forum with technical expertise.

Phone Booth rings a Bell- A Knock Out Punch at Mumbai High Court!

2012-02-26T13:23:00.000+05:30

A few weeks back, I expressed my worry about “Inspirational Plagiarism”. To my delight, I was turned to a decision of the Mumbai High Court rendered in 2010, Twentieth Century Fox Film Corporation vs. Sohail Maklai Entertainment Pvt. Ltd., discussing a similar issue, albeit in the context of film scripts.

The extremely popular “Phone Booth”, produced by Twentieth Century Fox moved a suit against the producers of Bollywood flick Knock-Out, alleging infringement and praying for an injunction against the release of the movie and distribution of copies of the movie, in any manner. The decision reveals that several letters had been exchanged between Twentieth Century Fox and Sohail Maklai Entertainment Ltd., even before the matter moved to Court.

The producers of Knock-Out claim that the only similarity between the scripts is that “the guy is trapped in a phone booth”.

For our readers who have seen the English movie, will agree when I say that such “Entrapment” (and what a movie that was!) is central to the Twentieth Century Fox production. The judge, in cognizance of this fact, states, amongst other points of comparison:

"The conversation between the caller and the protagonist are rather similar; such similarity cannot be co-incidental. Its style as well as the content of the conversation and the design in bringing out the conduct of the man would leave an unmistakable impression that one was copied from the other. That is the basic concept of the two films.”

Further the Judge taking note of the differences between film making styles in Hollywood and Bollywood says:

“It is seen that the duration of both the films is rather different; though the first is long enough the second is far longer for the message it conveys. Consequently and naturally, the second has further and other aspects to convey and portray more specially the political drama with several more characters and scenes which are essentially embellishment and ornamentation in developing the expression of the idea or the prime thought of the first film.”

In the paragraphs that follow, the judge makes a rather interesting comparative:

“These ideas can be understood by the distinction of a discovery and an invention. Whatever is there but not brought out would be discovered; but whatever is not there is invented for the first time. The inventor would, therefore, alone have copyright in the expression of that invention which is the artistic work. Hence copyright is contained in the original expression of the idea. It is expressed in the frame of the product. It is the thought that is sought to be portrayed and conveyed which carries a copyright and not the original idea. Hence whilst the idea may not be unique to the author, the image portrayed or the expression made is essentially unique to the author. If such an expression in the shots of a film is copied, lifted from an earlier film, the infringement is complete.”

I think this paragraph sums up the view that the judge takes, rather succinctly and drawing an interesting comparative, while doing that! For those who worry about the rampant Inspirational Plagiarism like me.. Here Comes the Sun!

Of Markets, Exhaustion and Trade Marks..

2012-02-19T15:36:00.000+05:30

A recent Delhi High Court decision, has left me rather perplexed! The decision rendered in Samsung Electronics Company ... vs Kapil Wadhwa & Ors, deals in exhaustion of rights vis-à-vis trade marks, and an associated claim of infringement.

The decision leaves me taken aback for the interpretation that it takes on the legislation, albeit attempting to justify its stand, under the layers of dicta that guide legislative interpretation, and drawing international comparatives- both of which are, in my humble opinion, unnecissitated.

To summarize the 156 page long decision, the allegations made by Samasung, upon the defendants were that by way of parallel importation and lack of consent or authorization, the defendants sold the products, thus committing infringement as envisaged under the Trade Marks Act.

Also by way of deep hyperlinking and meta-tagging, they had committed infringement and mislead consumers to believe the source of products to be Samsung itself. The court while determining infringement, states that the law of Trade Marks in India, follows the scheme of National Exhaustion of rights, which I am in vehement disagreement with.

For the benefit of our readers, the operative part of the provision governing exhaustion of rights is reproduced here:

30. Limits on effect of registered trade mark.—

3) Where the goods bearing a registered trade mark are lawfully acquired by a person, the sale of the goods in the market or otherwise dealing in those goods by that person or by a person claiming under or through him is not infringement of a trade by reason only of—

(a) the registered trade mark having been assigned by the registered proprietor to some other person, after the acquisition of those goods; or

(b) the goods having been put on the market under the registered trade mark by the proprietor or with his consent.

In discussing whether the mark has in fact been infringed, and whether the provision acts as a defence (or “limit”, in statutory language), the Judge looked at the use of the term “market” in its different forms – viz. “in the market” in the body of the provision, while “on the market”. The use of prepositions, 'in' and 'on' are construed as below:

“[O]nce the situation becomes clear about the import of the opening words of the section, then the said lawful acquisition due to the controlling words registered trademark must originate from the domestic market/ national market, and the subsequent wordings has to be also given contextual reading and the wider import of the same words "in the market" cannot be given to include "worldwide market"…

However, this makes little sense to me. The provision describing “use of a trademark”, under S. 29(6)(c) clearly qualifies “imports or exports goods under the mark”.

As a fall out, how can the term “in the market” or “on the market” be construed as being the domestic market? “Import” as we all understand means bringing “into one’s country” (I deliberately choose not to use the term market here, because, the two need not necessarily coexist!)

Another reason I refute this interpretation is the way the law of trade marks is designed to operate. While the law may be to grant territorial rights, it does not deny rights to register or apply for registrations to corporations outside India. One can appoint an Indian agent and have a body incorporated in a foreign location to apply for the mark. If “in the market” were to be construed strictly, as deliberated by the learned judge, then every applicant would have to furnish an address and accompanying proof of residency in India.

Additionally, as many of us would have encountered in our practice, one of the most concrete and reliable proofs of use,are invoices and bills of lading, to prove “use in India”. In this view, if exhaustion is only meant to be national, have we been wrong so far, as to advice registrants to maintain records of their voluminous shipping documents? If exhaustion of a trade mark was only meant to be “national”, then we would only have invoices from distributors or local subsidiaries.

To further attempt bolster as to why a trademark may originate from a registrant, having presence in India vide imports, is the fact that we have recognized the principle of “well-known trade marks” and accompanying secondary significance way too well in our jurisprudence. If law were to interpreted absolutely in a territorial structure, then what we are ALSO indirectly saying is that the opening up of our economy, as executed by the present Indian Prime Minister, (during his term as a Finance Minister in the 1990s), was superfluous!

Further in the judgement, the Learned Judge also reasons that :

“This is due to the reason that the word "market" is not qualified by any other word either in clause (3) or sub clause (b). It is just mentioned "in the market" and "on the market". Had there been a separate meaning ascribed to the word "market" in sub clause (3) and in (b), then there must have been a qualification before or after the word "market" in both the provisions which is not so present.”

I do not think the word market needs to be defined or qualified by another term, so as to monitor trade mark. The law of Trade Marks is for the consumers, who very clearly define the market - so long as demand for a product or brand exists, the market does.

The Trade Marks Act, 1999 also carefully omits defining this term- for reasons beyond the obvious. “Likelihood of confusion” is also deciphered on this very basis constituting of trade channels, class of consumers, price disparities and the akin- something that you and I as the commoner would consider during our shopping escapades.

All in all, I think this judgment clearly misreads the law. I shall revisit the judgment soon for a fresh take. In the meanwhile, I hope that we will hear from our readers on what they think of this ruling.

P.S. Thank you to a dear friend of the blog, for pointing this decision to me.

Indian Patent Office and RTI applications: Is There Scope for Improvement?

2012-02-16T01:08:00.004+05:30

In the recent past, quite a few practitioners who I've had the opportunity to interact with, have mentioned on more than one occasion that the Indian patent office is not particularly responsive to RTI applications. Considering the transparency overdrive that the intellectual property office has been in the past few years, this is indeed a surprising feedback.

I, for one, would have thought that prompt responses to RTI applications would have been one of the first points of emphasis in an effort to bring in transparency to the Indian intellectual property establishment. It appears that the promptness of responses to RTI applications is not uniform across all offices. It also appears that there is no consensus among the four patent offices as to what can legitimately form the subject matter of an RTI application.

It would probably help to issue guidelines in order to avoid a flood of frivolous applications and to promptly respond to permissible applications. A few questions arise in this regard – can RTI applications act as substitutes to inspection of files at the office? How does section 153 of the Patents Act interplay with the scope of subject matter that can be sought in an RTI application?

Also, is it permissible to seek information in an RTI application with respect to the contents of published documents which are available for inspection by members of the public? It is my humble opinion that practical issues like these must be addressed by the patent office on a regular basis since that would help applicants and practitioners save time by understanding the options available to them.

So far, there has been very little analysis of the manner and uniformity of responses to RTI applications by the Indian patent office. An empirical study, however brief, would help throw light on the effectiveness of RTI applications as a means of obtaining information from the patent office. In the meantime, we request our readers to share with us their experience in filing RTI applications at the patent office and their suggestions for improving the prevalent situation.

Any room for Inspirational Plagiarism?

2012-02-06T22:42:00.000+05:30

I think aloud as I listen to one of my favourite George Harrison/The Beatles numbers “My Sweet Lord” - I am reminded of the plagiarism suit that went along. Someone as great as Harrison was not excused, although he admitted that he never had “He’s so fine” on his mind, while composing My Sweet Lord. More about the row here.. My personal opinion, is that the judgment was a bit harsh.

And then, as much as a Bollywood loyalist that I am, I often wonder, can “inspiration” be really an excuse to copy music??? Although I hate to admit, the fact is that I often find myself listening to new songs, and I know that the riffs, chords, et al. are a pick up from some old song. The first one was as a very young child, listening to the inspirational version of “The Final Countdown” and the most recent one being last night - a Boney M rip off..

As I think of it, since copyright is apparently a pan-jurisdiction right, thanks to the Berne convention and non-requirement of registration, National Rights should be applicable to enforce such rights violated out of such “inspiration”.

Assuming a plausible situation, where an international artist came about to enforce rights against an act of “Inspiration” in India, “fair use” would be an obvious defence taken up in the issue. However, if we carefully look at the Act, S. 52 dealing on Fair use, titled “Certain acts not to be infringement of copyright”, covers Parody and not “inspiration”. That apart, whether rights have been violated to the extent of being “infringement”, is one meant to be decided on facts.

That having been said, it appears that irrespective of a case for infringement having been made out or not, would violation of moral rights stand a chance? I believe it would! Section 57 under the Copyright Act, 1957, reads:

“Author' s special rights. Independently of the author' s copyright, and even after the assignment either wholly or partially of the said copyright, the author of a work shall have the right to claim the authorship of the work as well as the right to restrain, or claim damages in respect of,-

(a) any distortion, mutilation or other modification of the said work; or

(b) any other action in relation to the said work which would be prejudicial to his honour or reputation…”

For a jurisdiction that in fact does give prominent weight to the violation of moral rights, I wonder why we haven’t had many cases in Music covering such “inspirational plagiarism” as I would like to call.

Though the idea-expression dichotomy would prevail as a premise, yet these cases should find a favourable verdict for copyright owners. Knowing the caliber and musical inclination that our judges have, in making line by line comparisons, the cases shouldn’t be a difficult slide.

On a funny note, a friend of mine and I discussed how one particular "original song" had been converted to a Devotional number, by replacing the lyrics. We discovered this on our school trip in Grade 4. And he asked "What would the Divine Gods do? Which Court would they approach?" I but of course had no answer, however this is definitely a point to consider!

Use in a Trademark Sense and Passing Off : Is the Law Clear?

2012-02-05T14:30:00.002+05:30

Popular discussion associates infraction of trademark rights with suits for passing off and infringement, with the general distinction being that the former is instituted in the case of an unregistered trademark, and the latter for a registered trademark. The result of this popular association is that it is always assumed that an action for passing off is one which must and necessarily involve the use of a trademark.

What must be understood is that a trademark action, be it for passing off or for infringement, is one that ought to involve use of a trademark in a trademark sense. In other words, the mark must be used as a source signifier.

It is interesting that the law of “trademark passing off” combines actions in equity for reputational harm with principles governing identity and source signification under trademark law. This is precisely why an action for trademark passing off requires:

1. existence of a reputation worth being “passed off”; and

2. the very act of passing off

That said, what constitutes the “act of passing off”? Is the act of passing off limited only to those instances where a mark is used in a trademark sense? Or does it extend to all instances where use of the visible face of the owner, may not amount to use in a trademark sense, but still gives rise to association with the owner?

If it is the latter, should an action for passing off limit itself only to the first situation i.e. use in a trademark sense? If no, and if it extends to the second category i.e. all situations that give rise to association, can the action be called an action of “passing off of a trademark” or would it be a “pure passing off action”?

I am inclined to go with the conclusion that a pure passing off action lies even if use of the mark is not in a trademark sense. That said, I am still not sure that the law on “use in trademark sense” has been etched in stone for all time to come. I think there is still a lot of scope for including hitherto un-encountered situations.

For the purposes of this discussion, let’s take an artistic work which is protected by a copyright, and is also used as a device trademark by the owner of the work. Let’s assume a third party uses the artistic work on his goods, but not in a trademark sense. It is clear that an action for copyright infringement can be made out without much difficulty, but since the use is not in a trademark sense as it is understood today, principles of trademark violation may not be marshalled to allege passing off of the trademark.

Does this mean the owner cannot allege passing off at all? I think it is perfectly possible for the owner to allege “pure passing off”, on the basis that the artistic work/character itself has acquired immense reputation and association with the owner. Therefore, use of the character/artistic work, even if not in the “trademark sense”, amounts to free riding on the reputation of the owner. This is passing off in the strictest sense of the term, which is incidental to copyright infringement.

The above illustration is easier to analyse thanks to the presence of copyright infringement since it involves an artistic work. But, what would be the conclusion in situations where the work is not protected by copyright, and the use is not “trademark use”, but has immense secondary significance to bring about an association with the owner in the minds of the consumer?

For instance, let's take a word mark. What kind of use of a word mark would not constitute use in a trademark sense, but may still give rise to association in the consumer's mind? I can’t seem to think of an appropriate illustration. May be our readers could help us think of the appropriate example.

In the mean time, readers could take a look at this US judgment which is relevant to the discussion, and was brought to my attention by a friend and colleague when I shared my thoughts with her.

Off-Topic: The storm between the Fest- The Satanic Verses plays Tempest

2012-01-28T16:13:00.000+05:30

The Indian media over the last one week, has been flooded with news relating to one man- Booker prize winner Salman Rushdie. As the Jaipur Literary festival took stage, a few authors chose to read from his book “The Satanic Verses” – his work that was banned from release in India in 1988, on the pretext that the contents were hurtful to the religious sentiments of Muslims residing in India.

The controversy surrounding the book really took centre stage, as some authors chose to read excerpts from The Satanic Verses . The readers of excerpts state that they did so, not from the book, but in fact from excerpts available online. The readers of the excerpts, were advised to leave Jaipur for the fear of arrest.

The fact that disturbs me is that while the book is banned for release, sale, import etc. in India, would reading of its excerpts also qualify as an act that would be actionable under law???

One of the issues that bothers me is the issue of access. Although physical copies of the book are unavailable, the presence of its extracts in the internet space, does facilitate access, even though the extent of it may be limited. In this view can reading an excerpt really put one into trouble?

Another aspect is, what about freedom of expression? We know of several authors, painters,and film makers who choose rather provocative subjects. And so long as the readers chose extracts that were in fact not so provocative, should they be really threatened? And more so, in the context of a book, how would one judge what is distasteful to many, separated from the rest of the body of the work that travels with it?

While everyone, including retired Justices of the Supreme Court of India, has had something to say, this issue and the blowing up of it itself has left a bad taste in my mouth.

On one hand, in the world of Intellectual Property we talk of creative freedom, so much so that we have disregarded registration as an essential to enforce one’s rights in a work; On the other, the world of constitutionality talks of freedom of speech and expression. And yet some authors in appreciation, criticism or by reference, referring to a banned book is a taboo..

I am really at loss of an opinion- is this a reflection of the fact that we are still where we were, close to 25 years back??? Or, is this just an attempt to make a noise, specially since, we are considered a society that has always been open to interpretations, versions and fables to follow..

Delhi High Court: Both Counter-claim and Revocation Petition Can Continue Concurrently (?)

2012-01-21T18:29:00.014+05:30

“Should the respondents/the original defendants be permitted to continue the prosecution of proceedings for revocation of patents instituted by them, before the Intellectual Property Appellate Board (in short “IPAB”) when, purportedly, they have elected to prosecute their counter claims for revocation of the very same patents, in the suits for infringement, filed by the appellant, who is the original plaintiff?”

This was the issue in an appeal before a Division bench of the Delhi High Court in Dr.Alloys Wobben v. Yogesh Mehra & Ors. The appeal was decided yesterday, January 20, 2012 with the Court dismissing the appeal.

FACTS:

Yogesh Mehra, the responsdent/defendant, filed revocation petitions under Section 64 of the Patents Act, before the IPAB starting from 2009 until 2011 against the patents of Dr.Aloys Wobben. 19 of the total 23 revocation petitions were filed before the IPAB in 2009.

In a writ petition filed by Dr.Wobben against the revocation petitions, the Madras High Court ruled against Dr.Wobben and directed the IPAB to hear and dispose of the revocation petitions within a period of 3 months.

Besides filing revocation petitions, Yogesh Mehra also filed counter-claims to the 6 suits for patent infringement instituted by Dr.Aloys Wobben. Each of the 6 counter-claims challenged the validity of the very same patents against which revocation petitions were filed before the IPAB.

In late 2010, Dr.Wobben filed an application before the Delhi High Court seeking stay of proceedings before the IPAB. This application was dismissed by the Single Judge of the High Court. Against this dismissal, Dr.Wobben preferred the appeal in discussion.

DISCUSSION:

Counsel for Yogesh Mehra, the respondent, submitted that when the “nature of challenge” on the same issue between 2 fora (“forums”) was materially different, then both proceedings can continue concurrently. The Division Bench too concurred with this argument of the respondent and dismissed the appeal.

By “nature of challenge”, the respondent sought to strike the distinction that before the IPAB, the challenge was in the form of a “revocation petition”, whereas the action before the High Court by the respondent was in the nature of a “counter-claim”/counter-suit. Therefore, according to the respondent, both the counter-claim and the revocation petition could continue concurrently before two different forums.

The Court also took the view that only when the two proceedings are inconsistent with each other, a party was required to elect between the two (“doctrine of election”). To support this view, the Bench relied upon a judgment of the Supreme Court according to which- where the remedies are not inconsistent, but are alternative and concurrent, there is no bar until satisfaction has been obtained, unless one part gains an advantage or the other suffers a disadvantage.

To me, this view appears flawed for the following reasons:

1. The IPAB was constituted with the object of creating a forum with the expertise to deal with the issue of patent validity.

2. Further, given that the IPAB is treated as an appellate body, which hears appeals against the decisions of the Patent Office, it must be treated as a body with original jurisdiction to deal with revocation of patents.

3. Section 64 uses “or” when it refers to a revocation petition and a counter-claim in a suit. This means, a party has to choose between filing a revocation petition before the IPAB and a counter-claim in a suit for infringement. It does not appear either correct or permissible to file both.

4. Further, as rightly contended by the patentee, litigants and courts must endeavour to avoid instituting parallel proceedings which could lead to conflicting decisions and could embarrass both forums. This is the spirit behind section 10 of the Code of Civil Procure which refers to Stay of Suits.

5. Regardless of the so-called difference in the nature of proceedings between a revocation petition and a counter-claim, the fact of the matter is that both proceedings deal with the same issue, namely patent validity and between the same parties. Therefore, the argument of difference in “nature of proceedings” does not hold water, at least in my view. It certainly does not hold water in light of the framework of the Patents Act.

The respondent countered that there is no provision in the Patents Act similar to Section 124 of the Trademarks Act. Section 124 of the TM Act requires stay of suit proceedings when a rectification petition is filed against a registered trademark. The absence of a similar provision in the Patents Act, according to the respondent, was a clincher and proved that proceedings before the IPAB cannot be stayed.

I am not sure the argument of the respondent draws the correct parallel. Section 124 of the TM Act deals with stay of suit proceedings; whereas in the case, the patentee sought stay of proceedings before the IPAB which had been instituted prior to the filing of the suits for infringement. Therefore, comparisons between Section 124 of the Trademarks Act and the Patents Act are of no relevance, at least in my view.

The comparison would have been relevant had one of the parties (respondent) sought stay of suit proceedings before the Delhi High Court until such time the revocation petitions were disposed off. This was clearly not the case here.The Court alludes to this in Para 12 of the judgment as follows:

“It would be trite to say that principles analogous to section 10 of the Code (Code of Civil procedure) empower a court to stay a suit pending before it if, the cause and parties before it are substantially the same and, the court dealing with the earlier action would have the jurisdiction to deal with the latter action as well. Where Section 10 of the Code does not apply sensu stricto, power is exercised by a court, often under Section 151 of the Code. The supervening object being, to avoid conflict of judgments and decrees. There is no difficulty with the principle, it is its application which at time causes problems. If we were to apply this principle, then we should ordinarily be staying the latter proceedings, that is, the suits pending in this court to await the result of the IPAB action.”

In my opinion, the following makes sense- if revocation proceeding is filed before the IPAB prior to the filing of the suit for infringement, a counter-claim to the suit challenging the validity of the patent must be not be entertained or must at least be stayed. This is because two proceedings addressing the same issue between the same parties and which are capable of delivering the same relief must not be continued concurrently.

In fact, going by this logic, it would have made sense for Dr.Wobben to seek stay of the counter-claims since 19 revocation proceedings had been preferred before the IPAB prior to the institution of the counter-claims.

But my guess is that probably Dr.Wobben did not want the IPAB to deal with the issue of revocation, for reasons best known to him. Probably, Dr.Wobben felt the IPAB proceedings could delay or adversely affect the expeditious disposal of the suit proceedings, and therefore he wanted those proceedings withdrawn or at least stayed.

Interestingly, in this case, the relief sought by the patentee does not appear to be the right one, and the position of the law postulated by the Court is flawed too. What is surprising is that the Court even awarded a cost of INR 5 lakhs (INR5,00,000) to the respondents. We certainly live in interesting times...

Can the use of Numerals qualify as Descriptively Fair?

2012-01-15T22:27:00.001+05:30

As trademark practitioners, a phrase that becomes an integral part of our daily jargon, and one that we rattle off, at the drop of a pin, is “likelihood of confusion”. Undoubtedly, a vital concept, that forms the central theme of trademark jurisprudence, however, cannot be a sole ground to move civil action in Court.

In other words, while an action of infringement or passing off against another trademark, must have a finding that leads in the direction of “likelihood of confusion”, the same does not suo moto form the basis for civil action.

Perhaps, what I have just summarized is the crux of what an appeal at the Delhi High Court, in the case of Radico Khaitan Ltd. v. Carlsberg India Pvt. Ltd, held. Interestingly, two alcohol manufacturers were at row with each other, for their marks that used the numeral 8 in common. The action was said to be "one for infringement and in the alternative for passing off".

Radico are registrants of the mark 8PM used for whisky, while Carlsberg sells beer under the mark “PALONE 8”. Further grievance was that Radico’s slogan “AATH KE THAATH” (the luxury of eight) pertaining to the trademark “8 PM” had been piggy ridden on by Carlsberg by using the slogan “8 KA DUM”, meaning the potency of 8 .

The decision makes for an interesting read, albeit on other fronts- While the decision does not delve on the slogan being under copyright or trade mark protected, the court looked at the viability of numerals,and related non-exclusivity under the scope of trade mark protection.

However, observing here (as also in the impugned judgment), that the numeral 8 was in common usage in the alcohol industry, perhaps to describe the percentage strength of the alcohol, the Judge stated that:

"A holder of a protectable descriptive mark has no legal claim to an exclusive right in the primary, descriptive meaning of the term; consequently, everyone is free to use the term in its primary, descriptive sense; but with a caveat.

The caveat is that: "so long as such use does not lead to consumer confusion as to the source of the goods". And in an action for infringement the "fair use" defence is available only to situations where the alleged infringer employs a trademark in its descriptive sense, as opposed to as a trademark.”

In analyzing whether Carlsberg’s use of the numeral 8 qualified the “descriptive fair use” standard, the Court addressed three questions:

(i) Does the numeral 8 indicate any quality, functionality, property, content etc. of the product itself?

In addressing the first question, the Court noted that the alcohol content in the beer being 7.5%, the adoption of 8 was in fact arbitrary. I personally disagree, and believe that the adoption was in fact descriptive, atleast in the choice of numerals. Else, why not any other number?

(ii) Does the numeral “8” appear „in a manner of speaking on the label or has been given undue prominence so as to appear as a trademark?

The Court here observed that the numeral being several times larger than the text was clearly not written with an intention to be a mere descriptor, but to be the most prominent component of the label, which cannot be termed as descriptive fair use and is clearly in the nature of trademark use.

(iii) Does the product, aside from the numeral "8", carry any other mark which is intended to be the "brand name" or "trademark" by which consumers are to ask for the product?

The Court opined that the consumer is most likely to tell the bartender or the salesman at a liquor vend: "Give me beer 8" and not "Give me beer Palone 8", since 8 is the single most prominent feature of the label and that consumers are most likely to identify with the same. I disagree with this too- I don't think most beer drinkers would be so oblivious of their brand preferences.

The Court denying injunction concluded as:

A. Radico had a registration for “8 PM” as a composite mark. Thus, it could not claim exclusivity over the single numeral “8” to restrain Carlsberg for trademark infringement.

B. Carlsberg cannot rely on descriptive use as a defence to pre-empt Radico's claim.

C. For passing off, the last two prongs of the classical Jif Lemon trinity have to be applied to test if there is any consumer confusion (or likelihood thereof) and any resultant damage caused to Radico by the impugned use of the numeral "8" by Carlsberg.

While it is admirable that this court attempted be creative and introduce to Indian Trade mark jurisprudence a concept such as descriptive fair use, I feel this wasn’t the best instance to do so. The concept to my mind finds application in the use of a trademark itself, and not a numeral or colour, that has been denied exclusivity in the regular course of trade mark prosecution history.

Having admitted that this was a composite mark, I think the court should have looked at factors akin to the Polaroid factors, rather than dwelling so deep into the doctrine of fair use.

Collective Bargaining and Cartel-like Conduct- II

2012-01-07T19:41:00.001+05:30

In the last post, I had discussed the possibility of pegging collective bargaining as a defense within the Proviso to Section 3(3) of the Competition Act.

I had suggested that a collective stance taken by entities/persons which/who are placed similarly may be treated as a joint venture agreement which increases the efficiency in provision of services.

It is certainly possible to argue that an agreement entered into by parties with the ultimate object of preventing reduction in efficiency of services, too could be construed as a joint venture which increases the efficiency in provision of services.

After all, , if the intention of parties to a collective bargaining initiative/joint venture agreement is to ensure that the industry remains competitive, and that overall transactions costs do not increase, such an initiative/agreement must necessarily be seen as increasing the efficiency of the industry.

Simply put, in judging the object behind and effect of a collective act, and to decide if it can be legitimately treated as “collective bargaining” under the Proviso to Section 3(3), logic and law dictate that one must have regard to surrounding circumstances such as:

A. the nature of the business;

B. parity between parties;

C. the root cause/bone of contention;

D. alternatives to collective bargaining;

E. past negotiations/parleys between warring factions and like factors.

This is mandated by Section 19(3) which states that the Competition Commission of India “shall” have “due regard” to factors stipulated in Section 19 in determining whether an agreement has an “appreciable adverse effect” on competition.

In other words, if the CCI chooses to focus only on the effect with absolutely no regard to the cause, not only in the enquiry incomplete, the very legality of the enquiry can be challenged as unlawful under the Act.

Collective bargaining agreements among small business have been recognized as exceptions to cartel-like conduct in Australia. Following is the observation of the Committee of Inquiry for the Review of the Trade Practices Act of the Australian Parliament, also known as the "Dawson Committee”:

“In some industries a number of competing small businesses must bargain with big business. Individually, the small businesses may lack bargaining power and so may seek to join together and bargain collectively, thereby exercising a degree of countervailing power to that of big business. Collective bargaining at one level may lessen competition but, at another level, provided that the countervailing power is not excessive, it may be in the public interest to enable small business to negotiate more effectively with big business”

Even under the Taiwanese Competition Law, a collective effort by Small and Medium Enterprises (SMEs) for purposes of improving their efficiency or increasing competitiveness is permissible.

It also appeals to one’s sense of fairness that smaller entities who individually do not have a say at the negotiating table, must be in a position to come together to voice their grievances. This would probably go to the very root of competition jurisprudence, which is to provide a legal mechanism to redress market-place bullying.

Instead of relying on interpretation to legitimise collective bargaining, it would probably help to amend the law to expressly provide for collective bargaining by small business as a legitimate exception to cartel-like conduct.

Correction

2012-01-04T21:05:00.002+05:30

In the last post, I had inadvertently termed the right to collective bargaining as a fundamental right. I have corrected it to “legal right”

Competition Act: Is Collective Bargaining a Defense to Section 3(3) of the Competition Act?

2012-01-04T20:06:00.005+05:30

In an earlier post, I had mooted a discussion on Competition Law. In this post, the approach to Section 3(3) of the Competition Act is being dealt with. Section 3(3) reads as follows:

(3) Any agreement entered into between enterprises or associations of enterprises or persons or associations of persons or between any person and enterprise or practice carried on, or decision taken by, any association of enterprises or association of persons, including cartels, engaged in identical or similar trade of goods or provision of services, which—

(a) directly or indirectly determines purchase or sale prices;

(b) limits or controls production, supply, markets, technical development, investment or provision of services;

(c) shares the market or source of production or provision of services by way of allocation of geographical area of market, or type of goods or services, or number of customers in the market or any other similar way;

(d) directly or indirectly results in bid rigging or collusive bidding;

shall be presumed to have an appreciable adverse effect on competition:

Provided that nothing contained in this sub-section shall apply to any agreement entered into by

way of joint ventures if such agreement increases efficiency in production, supply, distribution,

storage, acquisition or control of goods or provision of services.

The provision deals with cartel-like conduct. Like most provisions of the Competition Act, 2002, it raises rebuttable presumptions of anti-competitive conduct. This is clear from the phraseology of Section 3(3) which says “shall be presumed to have an appreciable adverse effect on competition in India”.

Precisely because the presumption is rebuttable, a strict “per se” approach to the behaviour of a party under Section 3(3) would be wrong in law. Stated otherwise, a narrow view of an allegedly anti-competitive action/agreement would run counter to legislative intent.

Further, the provision speaks of “appreciable adverse effect”. Why does the provision use “appreciable”? Does this mean “appreciable” qualifies the alleged “adverse effect”? I think, by using the word “appreciable” before the words “adverse effect”, the Legislature intends to frown upon only those agreements whose adverse effect is appreciable/significant and which is a clear consequence of an impugned agreement.

In the event the adverse effect is not “appreciable”, such an agreement is out of the purview of Section 3, and is hence not anti-competitive. In other words, a non-appreciable adverse effect could actually be a legitimate defense to an allegation under Section 3 of the Act.

What other legitimate grounds of defense are available to a party which is accused of cartel-like conduct under Section 3(3)? The Proviso to Section 3(3) comes to the aid of a party accused of cartel-like behaviour, in rebutting such a presumption/allegation. Simply put, the Proviso to Section 3 is an exception to the proscriptions of Section 3(3).

Now, does collective bargaining fall within the scope of the Proviso to Section 3(3)? Let’s read the Proviso again:

Provided that nothing contained in this sub-section shall apply to any agreement entered into by way of joint ventures if such agreement increases efficiency in production, supply, distribution, storage, acquisition or control of goods or provision of services.

The reference in the Proviso is to “any agreement entered into by way of joint ventures”. Does the Act define “joint venture”? No.

“Joint venture” has been typically susceptible to judicial interpretation which has progressively expanded over time. Therefore, would it be impermissible to include “collective bargaining” within the scope of “joint venture”? I don’t think so.

Has the Competition Commission of India (CCI) commented on “collective bargaining”? In a decision delivered last year in FICCI – Multiplex Association of India v. United Producers/ Distributors Forum, the CCI has recognized the permissibility of “collective bargaining” as a legitimate argument. The relevant para is as follows:

“23.48 Collective bargaining may not be per se bad in law and may be resorted to for legitimate purposes in accordance with law. However, when the trade associations enter into agreements, as in the present case, in the garb of collective bargaining which are anti – competitive in nature, then no competition watchdog can countenance such act/agreement. Resultantly, the plea of collective bargaining, in the facts of the present case, is without any merit and the same is directed to be dismissed.”

It is clear from the above that the argument of collective bargaining, which is permissible in law, was rejected in the Multiplex case only on the basis of facts. Therefore, if the facts of the case had supported the argument, collective bargaining would have been tenable in that case.

An act of collective bargaining must necessarily be seen as a defense to an allegation under Section 3 because not only has it been recognized as a legal right by the Hon’ble Supreme Court of India, but also because it preserves the very intention of the Legislature as reflected by the Statement of Objects and Reasons to the Act:

“ to prevent practices having adverse effect on competition, to promote and sustain competition in markets, to protect the interests of consumers and to ensure freedom of trade carried on by other participants in markets, in India, and for matters connected therewith or incidental thereto.”

Also, collective bargaining by members of an association, although a horizontal agreement, could be treated as a “joint venture” under the Proviso to Section 3, provided the intention behind such collective bargaining/joint venture is not anti-competitive.

How do foreign regimes deal with “collective bargaining” under their competition laws?...to be continued

Trade Marks and Domain names - Can there be a broken link?

2012-01-02T01:57:00.001+05:30

A recent decision of the Delhi High Court, deals with the inextricable link between Domain names and Trade Marks, and more specifically a domain name containing a generic term - namely,“internet”.

The decision addresses petitions that challenge an award by the sole Arbitrator, appointed by the National Internet Exchange of India (NIXI) to adjudicate the issue.

The domain name “internet.in” was registered by one Stephen Koenig, and was complained against as being identical and confusingly similar to Jagdish Purohit’s trademark “internet”. It was alleged that the acquisition of the domain name was a fall out of Koenig having no legitimate interests in the domain name, and hence, acquired in bad faith.

The Arbitrator in view of the nature of the term "internet" and .IN Dispute Resolution Policy (INDRP), had awarded that the domain name be struck down and denied the plea to transfer the domain name to Purohit.

The High Court, however, held that the cancellation of the registration of the domain name ‘internet.in, would not automatically entitle the transfer of the domain name in favour of the defendant. Clearly, as the Court noted, the Respondent was unable to show that he was actually using the trademark ‘internet’ in his business.

Additionally, the Court stated that the fact that the word ‘internet’ is generic and that the trademark ‘internet’ of the Respondent is therefore a weak one, are relevant considerations that support the decision of the learned Arbitrator to decline the prayer for transfer of the domain name ‘internet.in’ in the respondent's favour.”

To this extent, the Delhi High Court, was in agreement with the Arbitrator’s decision. However, in one sentence, the Judge held that the direction in the impugned Award that the domain name ‘internet.in’ should be confiscated and kept by the .IN Registry, be set aside.

This to me, seems somewhat strange. If a term is generic, and hence a holder of a related domain name is said to be squatting upon the use of such a domain, why should the same not be confiscated? After all, if the law governing domain names follows the rationale behind trade marks, this is a natural corollary, especially since generic terms are disentitled from protection as trade marks.

If this is the case, what about trademarks that have become generic? The most common example that comes to my mind is Google, which has attained a tone of usage similar to a verb, rather than being used as a proper noun or adjective.

Am sure a player as big as Google has acquired domain names with nearly every possible top-level domain name. So in a hypothetical situation, where a deceptive or confusingly similar variant of google.com is registered as a domain name, will Google loose all its rights? Or is Genericism a trade off to being as big a brand as Google is?

I think some of our readers will be able to throw in some predictions. For now, I hope that 2012 brings about interesting quirks and questions for the blog to pursue!!

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

2011-12-31T11:48:00.007+05:30

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

2011-12-30T04:30:00.002+05:30

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

2011-12-29T00:51:00.006+05:30

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.

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

2011-12-28T00:38:00.003+05:30

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

2011-12-27T02:18:00.004+05:30

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

2011-12-27T00:45:00.003+05:30

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

2011-12-25T14:28:00.004+05:30

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

2011-12-25T14:12:00.007+05:30

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?!?!?!

2011-12-25T13:05:00.000+05:30

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

2011-12-13T22:25:00.000+05:30

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?

2011-12-13T00:17:00.000+05:30

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?

2011-12-12T02:18:00.004+05:30

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?

2011-12-08T01:55:00.004+05:30

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

2011-12-05T16:48:00.000+05:30

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.

Goodwill Hunting - Of Trademarks, Assignments, and the Business Concerned

2011-11-24T21:48:00.001+05:30

One aspect that can make trademarks and related transactions interesting, is the treatment of goodwill associated with the mark.

Under the Trade Marks Act, 1999, a registered or unregistered mark may be transferred with or without the goodwill of the “business concerned”. A reading of the provision in the statute, can often lead one’s mind to conflicting opinions and interpretations of law.

The use of this phraseology, created a sudden doubt in my mind, thanks to the haste I exercised- Is “Business concerned” to be interpreted as the business concerned with the trademark, or does it refer to the business entity, that used the trademark?

In the course of my research, I stumbled upon a case that discussed, in a somewhat indirect, yet interesting manner, the assignability of a trademark and the goodwill associated thereby, vis-a-vis an action for infringement. The 2007 Delhi High Court decision in Doctor Morepen Ltd. vs. Yash Pharma Laboratories Ltd., dealt in the use, assignment, and consequent infringement of a mark, used inrespect of a lemon based pharmaceutical preparation.

The mark LEMONLATE (along with copyrights, technical knowhow etc.), was assigned by Yash Pharma to Morepen. Later, Yash Pharma adopted the mark LEMOTAB, in respect of a medicine for common cold and flu.

In deciding whether a case of infringement had been made out, the court noted that Yash Pharma even at the time of the assignment, was cognizant of the fact that the word 'LEMO' was derived from lemon, and that 'LEMOLATE' was a coined word. The assignment had been made for a “hefty” consideration, accompanied by an undertaking, that they would not coin another mark similar to the coined 'LEMOLATE'.

The court stated that after giving this specific undertaking, and after receiving consideration, the defendant was precluded from using the term LEMO in respect of similar formulations. Observing that both the drugs being over the counter drugs, the court opined that the use of similar trade names, elevated the likelihood of confusion amongst consumers.

While the court did not directly attack goodwill or any aspect with respect to the intent to assign, the Court clearly noted as below:

“...the assignment agreement marks the entering of the plaintiff into the shoes of defendant to take full advantage of the trademark and maintenance of secrecy about the change in ownership reflects the intention that the market of the plaintiff may not be affected. By bringing a tablet almost in the similar name 'LEMOTAB', the defendant is not only infringing the trademark but also announcing indirectly that it has sold 'LEMOLATE' and now it has come up with another tablet which would be competing with 'LEMOLATE'.”

This case in my opinion, removes all doubt regarding assignment of a mark and goodwill. As I read it, not only does goodwill associated with the mark, need to be assigned, but the assignor also needs to give up any intent, plan or speculation to bring into the market, any mark likely to interfere with the goodwill appending the assigned mark.

In light of this decision, it seems apparent to my mind, that “with or without the goodwill of the ‘business concerned’” should be interpreted to mean the goodwill associated with the business as a business entity, and not the business appending or necessarily travelling with the mark.

If an interpretation otherwise be adopted, it seems to nullify the purpose of an assignment, which in fact is to ride upon the goodwill (and perhaps reputation) associated with the mark, without inviting any legal impediments.

I am a however informed that there are instances where goodwill need not necessarily be assigned. But in a situation such as this, wouldn’t such an assignment qualify as a naked or void one? (I understand that a similar position is adopted under the US law.)

Further, what strengthens my line of thought, is that it would be more lucrative for a person seeking assignment of a mark stripped away from its goodwill, to use an absolutely new mark and build on its goodwill independently, rather than paying for and using an assigned mark, while also incurring expenses on building its reputation afresh.

Having said this, I am unable to reconcile a line of logic behind the allowance of an assignment devoid of the mark’s goodwill. However, in view of businesses having multiple marks, and possibly multiple lines of business, I can imagine a situation whereby a mark is assigned (perhaps a mark different from the house mark), but not the goodwill of the business as a whole.

Debate and Disapproval on this string of thought is welcome.

"Stay of a Suit" under the Trade Marks Act

2011-11-18T00:18:00.000+05:30

For an Intellectual Property lawyer, developing an understanding of the various IP legislations alone, is insufficient. In fact, a hold over procedural law is just as vital; pertinently, where the two cross paths.

One such instance where this aspect has been brought to the fore, is the decision rendered by the Delhi High Court in The Financial Times v. Bennett and Coleman.

The case, discussing “stay of a suit” under Section 124 of the Trademarks Act, 1999, looked at the “tenability” of a stay when a rectification proceeding is pending. The mark in contention was “FT”, a much popular abbreviation, by which Financial Times is referred.

Noting the facts of the case, the Court affirmed that Bennett and Coleman had a right to contest the inherent non-distinctiveness of a trade mark, (either by filing an application for its rectification under Section 57, citing relevant grounds, or by approaching the Court). This right to contest was termed as sacrosanct, and beyond the scope of interference of any Court.

However, in this case, the defendant chose to move to Court in an infringement suit, in order to assert the invalidity of the FT mark by claiming non-distinctiveness, and consequently to preserve their rights to use the same. Later in the year 2007, they moved an application for rectification.

Further, in the year 2010, the defendant chose to approach the Delhi High Court for stay of the suit under Section 124 of the Trade Marks Act. The Court noted that this move was made close to nine years, post the initiation of the initial infringement suit. Looking at the complicated history behind the pending proceedings, the Court also noted that the issue had been referred to mediation, where it remained pending for close to three years.

The Court taking note of the long pending and complicated course that the case had taken, looked at the “Prima facie tenability” of the suit, and stated:

“The Court is also conscious that a blanket acceptance of the defendant’s plea of prima facie tenability of the argument that the letter marks are inherently incapable of distinctiveness would lead to certain unforeseen results especially in cases like the present.”

Further, commenting that staying such a suit, would have a “colouring” effect upon the decision of a Tribunal,the Court stated:

“The Court is conscious that this reason cannot be invoked under all circumstances, because Section-124 does empower prima facie examination of tenability. Nevertheless, while exercising that jurisdiction, a fine distinction has to be kept in mind between the nature of “tenability” of such a plea, while considering a temporary injunction motion, and one for stay of suit.”

The beauty of the decision, in my view, is that while the case discusses an aspect, which at first glance seems to have its roots dug deep into the Civil Procedure Code, it has been discussed simply on the basis of facts, with reasoning derived from the impact of a vital provision of the Trade Marks Act, 1999.

In my view, this judgment is a must read for all Trade Mark practitioners!!!

When is a “Well-Known” mark a well-known mark?

2011-11-17T00:51:00.001+05:30

In an earlier post, I had written on the distinction between “goodwill” and “reputation” of a trademark. I had also written on how reputation alone is sufficient for a well-known mark to exercise its exclusionary prerogative against third parties in a foreign jurisdiction.

However, there are a few nuances of well-known marks that I had reserved for this post to explore and explain.

It must be understood that intellectual property rights are, by default, territorial rights. Therefore, any rule which is an exception to this default mode of territoriality must satisfy certain stringent conditions in order to be enforceable.

A well-known mark is an exception to the rule of territorial application of trademark rights, and therefore, the owner of a well-known mark too must meet certain essential conditions beyond reproach. What might those conditions be?

Before I proceed any further, I must clarify that when I speak of enforcement of a well-known mark in a foreign jurisdiction, I refer to a situation where the owner of the mark does not have a registered trademark in the foreign jurisdiction, nor has he used it in the course of business in that foreign jurisdiction. In other words, his only justification for the enforcement of the mark is its status as a well-known mark i.e. “reputation”.

For the owner of a well-known mark to have the ability to preclude third parties in foreign jurisdictions from using the mark in the same field of business, the mark should have become well-known prior to the date of adoption of the mark by a third party in the foreign jurisdiction.

Let’s take “Infosys” as an example, which was founded in 1981 in India. Let’s assume that in 1985, a Brazilian entity had adopted “Infosys” in connection with the same field of business.

In the absence of a registered trademark in Brazil, and in the absence of use of the mark by Indian Infosys in the course of business in Brazil, would it have been possible for the Indian entity to prevent the Brazilian entity in 1985 from using the mark? The answer to this question is as follows:

1. The only way the Indian entity could have done so, is if it could have proven that before the date of adoption of the mark by the Brazilian entity in 1985, the Indian entity’s mark enjoyed a well-known status. In short, it had a reputation to reckon with before 1985.

2. This requirement needs to be qualified further. It is not enough for the Indian entity to show that it enjoyed a reputation in several jurisdictions. It is imperative to show that the entity enjoyed a reputation in Brazil before 1985. This has to be established on the basis of advertisements, trade talk, anything that can objectively establish knowledge of the Indian entity in Brazil prior to the adoption of the mark by the Brazilian entity.

Seen from this perspective, the requirement of “local reputation”, although without actual use in the course of trade, has the effect of “territorializing” the jurisprudence of well-known marks.

The corollary to this proposition is that, at a given point in time, it is perfectly legitimate for different entities in different jurisdictions to use the same trademark, without having the right to exclude others in foreign jurisdictions. This is similar to different entities holding patents in different jurisdictions on the same invention.

One judgment that is worth reading on this issue is Roca Sanitario S.A. v. Naresh Kumar Gupta

Provisional and Complete Specifications- "Fair Disclosure" and Priority Dates

2011-11-12T18:20:00.001+05:30

Last evening, a regular reader and well-wisher of the blog, Ms.Anita Kalia, asked me to write a post on internal consistency in Section 11 of the Patents Act. I thank her for giving me something to think and write about.

Before I proceed to discuss Section 11 specifically, I ought to spend some time on provisional and complete specifications. Section 10 of the Act spells out the contents of specifications, both provisional and complete.

Following are contents which are common to provisional and complete specifications under Section 10:

1. Title of the Invention

2. Description of the Invention

3. Drawings, mandatory if the Controller of patents directs

Claims need not and typically do not form part of the provisional specification, but does the Act say that claims cannot form part of the provisional? No.

Under Section 10(4), claims must form part of the complete spec., but they may form part of the provisional. Existence of claims in provisional spec. does not automatically make it a complete spec., if the applicant wishes to file and treat it as provisional.

The question is, do claims filed in a provisional spec. have priority dates? Section 11 of the Act, which deals with priority dates, makes it amply clear that there shall be a priority date for each claim in a complete specification.

Therefore, the concept of priority of claims is to be primarily associated with complete specification, and not provisional. It would be obvious to state that priority date, in a way, is legal fiction which antedates the claim to matter disclosed earlier in the provisional spec.

Be that as it may, the term “priority date” is not to be used in connection with claims drawn in the provisional spec. The claims drawn in a provisional spec. are given priority dates, only when they again form part of the complete spec.- this is the effect of Section 11(1).

How do we simplify the gist of Section 11? The common sentiment that runs along the sub-sections of Section 11 is the extent of disclosure of claimed subject-matter in the provisional spec. This is evident from sub-section(2) which refers to a “claim (that) is fairly based on matter disclosed” in provisional spec.

Sub-section(3) of Section 11 refers to a situation where a single complete specification is filed pursuant to more than one provisional specifications. Here, there are two situations that the sub-section speaks of:

A. Sub-clause(a) of this sub-section speaks of a situation where the subject-matter of a claim in the complete specification is fairly disclosed in one of the provisional specifications. In this case, the priority date of the claim is the date of filing of the provisional specification in which the claim is fairly disclosed.

B. Sub-clause (b) of this sub-section refers to a situation where the subject-matter of a claim in the complete specification is partly disclosed in both the provisional specifications. This means, the subject-matter is not fairly disclosed in a single provisional specification. Since “fair disclosure” is the litmus test, the provision deems the subject-matter to be “fairly disclosed” only in the later filed provisional specification. This is why the priority date of such claim is the date of filing of the later filed provisional specification.

Now let’s jump to Sub-Section(5) which appears to be (only appears, but is not) at loggerheads with sub-section (3)(b). Sub-section(5) reads as follows:

Where, under the foregoing provisions of this section, any claim of a complete specification would, but for the provisions of this sub-section, have two or more priority dates, the priority date of that claim shall be the earlier or earliest of those dates.

To me, there is no inconsistency or confusion between sub-section (3)(b) and (5). According to sub-section(5), if the complete specification has two priority dates (although strictly speaking it cannot), it means the subject-matter of the claims have been fairly disclosed in two provisional specifications. In such a situation, the priority date is the earliest priority date.

Simply put, sub-section 3(b) presumes that the subject-matter has not been fairly and intelligibly disclosed until the second provisional specification is filed, where the subject-matter attains completion.

On the other hand, sub-section (5) addresses a different situation i.e. the subject-matter is fairly disclosed in both provisional specifications, and therefore it must receive the benefit of priority of the earlier filed specification.

This is why I said that priority dates are integrally connected to the concept of “fair disclosure” of subject-matter.

Opinions and corrections are welcome!

Patent Injunctions: Isn’t it Time to Get Out of the Rut?

2011-11-12T03:10:00.006+05:30

It has become customary for defendants in patent infringement suits to cite judgments without ever addressing the facts of the case or applying precedents to the facts of the case. (I have written on similar lines earlier)

Standard arguments are- “The patent is recent”, or “injunctions ought not to be granted in patent matters”, both of which, according to me, are preposterous and baseless inanities.

I think these arguments have become convenient exit routes for Courts to avoid deliberation on technology in patent matters and to reduce the scope of arguments to these simplistic issues, which ironically have no basis in the statute.

In particular on the issue of recentness, I had written in the IAM Magazine a few months ago. I had written that one so-called rule of caution that was observed for several years by Indian Courts in patent suits, is the ‘six-year rule’.

This rule was originally prescribed in Terrells on Patent (Ninth Edition). In this book, according to the author, unless the patentee could show undisturbed possession for 6 years, he is not entitled to an interim injunction. This rule was subsequently applied by the Madras High Court in Manicka Thevar v. Star Plough Works (1965).

Fortunately, it was the Madras High Court in Mariappan v. Safiullah (2008) that observed that the 6-year rule has no place under the current framework (if at all it ever had a place).

Ironically, although the 6-year rule was done away with, our Courts again invented the “recent patent” rule. In Hindustan Lever v. Godrej Soaps (1996), the Calcutta High Court took the view that an interim injunction should not be granted if the patent sought to be enforced is a “recent” one.

The Bombay High Court applied this “recent patent” rule in Novartis Ag v. Mehar Pharma (2004) citing the Calcutta High Court’s decision in Hindustan Lever.

Thankfully, the Madras High Court interpreted the Hindustan lever decision in Novartis Ag v. Adarsh Pharma (2004) and rightly observed that the Calcutta High Court had never stated that an interim injunction must never be granted where the patent is of recent origin.

That said, the “recent patent” rule continues to be invoked in patent matters which baffles me no end. Funnily, the continued use of a “recent patent” rule militates against the very objective behind doing away with the 6-year rule. What is the logic behind introducing something so vague called “recent patent” after shunning the 6-year rule?

Not just that, Section 11A(7) specifically says that from the date of publication, an applicant for a patent has “like rights and privileges” as that of a patentee. If the intention of the legislature was to forbid enforcement of a so-called “recent patent”, then how does Section 11A(7) grant an applicant “like rights and privileges”?

In other words, does not the “recent patent” rule go against the express intention of the legislature as reflected by Section 11A(7)? What is surprising is that we seem to adhere fastidiously to dated precedents without checking if they are consistent with the law as it exists today. Its more of a “cut/copy-paste” job...

To me the “recent patent” rule reeks of an anti-innovator mindset which is probably a hangover from our cozy relationship with the erstwhile Soviet Union.

It is my opinion that arbitrary notions such as “recentness” must be done away with and patent jurisprudence must be based on something more concrete and reasonable. Most rules of caution which are applied to enforcement of patents have the objective of preventing enforcement of unworked patents by trolls.

This means, interim relief ought not to be denied in cases where the patentee satisfies working requirements under the Act, regardless of how recent the patent may be.

Also, given the high rate of obsolescence of technology, use of the “recent patent” rule makes no commercial sense. Courts must recognize that intellectual property rights, particularly patent rights, are not academic rights. They function in the realm of business, and so business realities must be acknowledged.

If patent grant itself takes 2-3 years at a minimum, and then the patentee has to wait for another 2-3 years before he overcomes the “recentness” barrier, effectively he has no protection for 6 years in a term of 20 years, by which time the technology may become obsolete.

By insisting on such a rule, haven’t we brought back the 6-year rule through the back door?...

Prescribed Period for Request for Examination: Delhi High Court Gives an Unwarranted Twist

2011-11-09T04:43:00.002+05:30

In a decision that was brought to my attention by my co-blogger Divya, the Delhi High Court may have erred on the prescribed period for filing request for examination of an application.

In a writ petition filed by a patent applicant, Mr. Carlos Alberto Perez Lafuente, the Delhi High Court was required to deliberate on the combined interpretation of Rules 24B(1)(i) and 24B(1)(iii) of the Patents Rules. Following is the Rule:

24B Examination of application: (1)(i) A request for examination under Section 11B shall be made in Form 18 (within forty eight months) from the date of priority of the application or from the date of filing of the application, whichever is earlier;

(iii) The request for examination under sub-section (4) of section 11B shall be made within forty-eight months from the date of priority or from the date of filing of the application, or within six months from the date of revocation of the secrecy direction, whichever is later;

What do we observe from Sub-rules (i) and (iii)?

A. Sub-rule (i) refers to Section 11B as a whole, whereas Sub-rule (iii) refers to Section 11B(iv)

B. Sub-rule (iii) refers to secrecy directions, which is absent in Sub-rule (i).

C. Sub-rule (i) uses “whichever is earlier”, whereas Sub-rule (iii) uses “whichever is later”

The question before the High Court was, since Sub-rule (i) refers to Section 11B as a whole whereas Sub-rule (iii) refers to Section 11B(iv), is an applicant governed by “whichever is earlier” or “whichever is later”? I could be wrong, but I think the answer is fairly straight-forward since the reference in Sub-rule (iii) is to applications in respect of which secrecy directions have been issued.

Let’s read Section 11B(4) to verify this:

(4) In case the applicant or any other interested person does not make a request for examination of the application for a patent within the period as specified under sub-section (1) or sub-section (3), the application shall be treated as withdrawn by the applicant:

Provided that -

(i) the applicant may, at any time after filing the application but before the grant of a patent, withdraw the application by making a request in the prescribed manner; and

(ii) in a case where secrecy direction has been issued under section 35, the request for examination may be made within the prescribed period from the date of revocation of the secrecy direction.

Sub-clause (i) of the proviso to Sub-section (4) of Section 11B refers to the consequence of delayed filing of a request for examination, along with an option for the applicant to withdraw his application any time before grant.

In contrast, Sub-clause (ii) of the Proviso refers to the prescribed period for an application in respect of which secrecy directions have been issued. When this Sub-clause is read with Rule 24B(1)(iii), there is no doubt that the Rule applies to an application in which secrecy directions have been issued. In other words, the “whichever is later” rule applies only to applications in which secrecy directions have been issued.

Surprisingly, the Delhi High Court held to the contrary and observed that there is a confusion as to the application of Rules 24B(1)(i) and (iii). It further went on to support the applicant’s contention that WIPO guidelines prevail in the case of a conflict between the Act and WIPO guidelines, since the Guidelines qualify as administrative instructions within the meaning of Rule 23 of the Act.

I don’t think there was any need to refer to Rule 23 at all the in the first place in the case, because there is no ambiguity or conflict in Rule 24B(1)(i) and (iii).

Opinions and corrections are welcome!

"Goodwill" and "Reputation" of a Trademark: Is there a Difference?

2011-11-08T02:40:00.002+05:30

It is common for people to use “goodwill” and “reputation” interchangeably when referring to the popularity of a trademark, but are these terms strictly synonyms? Law and logic, both appear to say they are distinct.

Goodwill is generated by actual availability of the good/service in connection with which the mark is used. Goodwill, which is the basis for a passing off action, requires actual business to be transacted using the mark, either by making the products available or by provision of services.

Reputation, on the other hand, is knowledge and awareness of the premium a particular a brand/mark commands although the good/service in connection with which the mark is used, may not be available in a particular territory/market.

For instance, a shoe designer like Jimmy Choo may be so popular outside the country that his reputation spills over into India through word of mouth or trade talk or interviews, although his shoes may not be available in India.

Typically, reputation is sufficient for a passing off action to be instituted for a well-known mark. In other words, actual business using the mark need not be transacted in India for the owner of a well-known mark to prevent others from using the mark. Existence of reputation, which can be established from literature, is sufficient.

This logic finds statutory sanction since the definition of a well-known mark under the Trademarks Act, 1999 does not insist on use of the mark within India. Incidentally, under Section 29(6), use of the mark in advertisements too constitutes use.

Surrender of Patents: Consequences

2011-11-08T01:59:00.001+05:30

Surrender of patents and its implications are not usually discussed, probably because it is not an option employed by patentees as often as revocation is by defendants, or at least not reported when employed.

Section 63 of the Patents Act deals with surrender of patents. It says that a patent may be surrendered by a patentee at any time by giving notice to the Controller. The corresponding rule is Rule 87, however the rule does not prescribe a particular form, so I am guessing any form which comes closest for this purpose may be used after modifying it suitably (Rule 8(2)).

What happens when a patent is surrendered? Does it go off the register as a matter of course? Section 63(4) says the Controller may hear any opposition to the surrender of a patent, and by order revoke the patent.

The “may” is used in connection with hearing an opponent who objects to the surrender of the patent. This means a hearing in an opposition to the surrender of a patent is not mandatory. This is in stark contrast to a pre-grant opposition, where hearing the opponent is mandatory.

Does the Controller have to mandatorily revoke a patent which a patentee wishes to surrender? Rule 87(4) is categorical in saying that after receiving the patentee’s offer of surrender, the Controller “shall” by order revoke it, and publish the revocation.

For quite some time, I was under the impression that revocation does not mandatorily follow surrender because I was of the view that post surrender the patent would revert to the State vesting the State with the same rights as the patentee. Turns out that although the logic is appealing, the Act says otherwise.

The other question is who can oppose the surrender of the patent? Section 63 says “any person interested” may oppose the surrender of a patent. Rules 57-63 would govern the opposition proceedings.

Why would anyone want to oppose the surrender of the patent? It could be a licensee who wishes to continue exploiting the patent. It could be a defendant in a suit for infringement of the patent who wishes to see the patent revoked in a counter-claim for revocation which is pending before the Court, than by surrender by the patentee.

In the latter situation, is there a bar against the patent being surrendered by a patentee mid-way during the revocation proceedings in a counter-claim to a suit or in a simple revocation proceeding? Section 63 does not appear to forbid surrender in either of these circumstances. Therefore, it appears possible for a patentee to surrender a patent, and make a dignified exit from a suit or a revocation proceeding.

Section 66A of the Information Technology Act: “Sending” Messages

2011-10-24T14:53:00.000+05:30

I was reading Section 66A of the Information Technology Act a few days ago because it appears there is some confusion surrounding its interpretation. The provision reads as follows:

66A.Punishment for sending offensive messages through communication service, etc.: Any person who sends, by means of a computer resource or a communication device,-

(a) any information that is grossly offensive or has menacing character; or

(b) any information which he knows to be false, but for the purpose of causing annoyance, inconvenience, danger, obstruction, insult, injury, criminal intimidation, enmity, hatred or ill will, persistently by making use of such computer resource or a communication device,

(c) any electronic mail or electronic mail message for the purpose of causing annoyance or inconvenience or to deceive or to mislead the addressee or recipient about the origin of such messages, shall be punishable with imprisonment for a term which may extend to three years and with fine.

'Explanation.- For the purpose of this Section, terms "electronic mail" and "electronic mail message" means a message or information created or transmitted or received on a computer, computer system, computer resource or communication device including attachments in text, images, audio, video and any other electronic record, which may be transmitted with the message.

The issue is whether the provision applies to publication of defamatory or prohibited content on websites. I am inclined to say no for the following reasons:

1. I do not think publishing information on a website/portal falls within the definition of "sending". According to me, the provision's use of the word "send" along with "communications device" leaves very little room to include "publication".

2. It must be borne that although publication results in communication, there is no attempt on the part of the legislature to include publication within the meaning of "sending".

3. Legislations are expected and presumed to be consistent in their use of terms. When the Act uses "publication" in one sense in select provisions (Section 67), but does not use "publication" in Section 66A, it means it does not intend to include mere publication by posting. In other words, although "sending" may result in publication, all publication cannot be equated to sending.

4. "Send" envisages a specific recipient(s). Also the provision refers to transmission and addressee/recipient of the message. This means the nature of the transmission is communicatory.

5. Also, it would be a stretch to argue that "communication/send" includes communication between the person who publishes the information and the system on which the information is published. That would amount to hair-splitting.

6. Further, even when the provision refers to use of computer resource, the legislature still makes no room for "publication" using the computer resource on a website.

7. The limited circumstance when publication on website would amount to "send" is when information published on the portal is "sent" and "received" by subscribers of the site/blog/social networking site. Simply put, we'll have to distinguish between publication simpliciter on a website and an update on Twitter or Facebook.

8. Not just that, there's a reason why the IT Act or Section 66A does not provide for defamation by publication on a site. Section 499 of the IPC is broad enough to apply to defamation using any medium, therefore one does not need any provision under the IT Act for it. This applies to obscenity and the like offences as well.

9. Consequently, since the IPC already provides an offence for the end product of the communication i.e. defamation, my take is that Section 66A forbids use of the medium recognized under the IT Act as a medium for defamation. Specifically, it forbids use of the medium as a "conduit" for sending offensive messages. We must distinguish between a "conduit" and a "place/cyberspace". Section 66A alludes to the use of information technology as a channel of communication, as opposed to a space for publication.

10. The equivalent provision in the “real world” is Section 20 of the Indian Post Office Act, 1898, which reads as follows:

20. Transmission by post of anything indecent, etc., prohibited.—No person shall send by post--

(a) any indecent or obscene printing, painting, photograph, lithograph, engraving, book or card, or any other indecent or obscene article, or

(b) any postal article having thereon, or on the cover thereof, any words, marks or designs of an indecent, obscene, seditious, scurrilous, threatening or grossly offensive character.

The emphasis in the Post Office Act is on "transmission by post" of anything forbidden. Therefore, it follows that even Section 66A, which is the “e-equivalent” of Section 20 of the Post Office Act, also frowns upon use of the medium as a "communication medium", and not as a means of "simple publication".

Comments and opinions are welcome!

Patenting in Life Sciences in the EU

2011-10-19T04:19:00.003+05:30

Yesterday, a discussion meeting on patenting in life sciences in the EU was held at Hotel Claridges in New Delhi by Ms.Sunita Sreedharan’s SKS Associates and a Swiss firm, Katzarov SA.

The discussion, which I took part in, turned out to be extremely lively and fruitful thanks to active participation by members of the discussion group, which included researchers in the field of life sciences, entrepreneurs from the field, patent practitioners and representatives from policy think-tanks.

Several key issues were discussed and doubts were thought aloud for opinions and clarifications from participants. I’ll discuss a few of them in this post which relate to European patent practice.

The representative of the European firm Mr. Andrea Manola informed us that therapeutic methods were excluded from patentability under the EPC. The rationale behind this, according to him, was the “no human contact” thumb rule of the EPO. In other words, if the method of treatment involves human contact, it must be presumed to be “industrially inapplicable”, and is hence out of the ambit of patentability.

However, if the treatment is cosmetic in nature, the active ingredient in the cosmetic would be patentable. To this, my doubt was if there was an incidental therapeutic effect to the cosmetic treatment, would it still be excluded from patentability? The EU agent said this would differ from case to case.

The thumb rule appears to be that if the therapeutic and cosmetic effects are not separable/distinguishable, the method is unpatentable. If they are distinctly identifiable and separable, the cosmetic effect alone can be patented.

The question which I put was, does grant of a patent for cosmetic treatment mean that use of the chemical for therapeutic purposes by a third party in the future does not infringe the patent? The answer to this question appears fairly straight-forward. Since therapeutic methods are not protectable at all in the first place, there is no infringement if the method/ingredient is put to therapeutic use.

On filing of divisional applications under the new rules, he informed us that for a divisional application to be filed before the EPO, the parent application must be pending and the divisional must be filed within 24 months of the first communication from the examining division of the EPO for the parent application.

My doubt was if a second divisional is detected by the EPO itself in the parent application during the pendency of the first divisional, but after the 24-month period, can the EPO direct filing of the second divisional? The European agent answered in the negative.

I asked the same question with respect to another situation- it is possible that a divisional may be detected in the first divisional application. This means, technically speaking, the new divisional is not detected in the parent application, but is carved out of the first divisional application. To this too, the EU agent said the 24 month period would be calculated from the parent application i.e. the earliest of applications.

This translates to additional burden on the inventor and the drafter to clearly understand the inventive step and identify the embodiments sought to be claimed in the parent application.

On filing of clinical/supportive data for pharma patents after the filing of the patent application, we were told that data filed after the priority date cannot receive the benefit of the priority date since the requirement of sufficient disclosure is to be satisfied as of the priority date, and not after that. This rule is not different from the one followed by the Indian Patent Office.

Besides these nitty-gritties, we were told that EPC does not contain provisions on infringement of patents, and that infringement is covered by national laws. To my surprise, I was told that France and Switzerland do not examine for inventive step. Further, if an EP patent is granted and a patent is granted on the same invention by France, the French patent is put in abeyance if the grant of the EP patent is challenged at the EPO.

This means if an infringement proceeding is filed by a French patentee in France, and if the defendant files for revocation of the EP patent on the same invention before the EPO, then until the conclusion of the revocation proceedings before the EPO, the French patent goes into abeyance, which effectively puts pause to the infringement proceedings in the French court.

In all, the discussion meeting was very insightful and a refreshing change from the usual conferences where interactions are exceptions and monologues are the norm.

Patents and Competition: "Arrangements"

2011-10-19T01:07:00.004+05:30

Two days ago, I was at a moot court competition conducted by HNLU, Raipur to judge the penultimate rounds. The moot problem was an interesting one, for it presented a factual matrix that called for combined application of patent law and competition law.

This is the second moot problem this year based on patents and competition law, the first was the problem statement of the moot conducted by NLU Jodhpur.

Student events like these turn out to be better platforms to address legal issues in a much more rigorous fashion than most conferences and presentations. One of the mooting issues was the interpretation of “arrangement” under the Competition Act, 2002 in a given situation.

In the moot problem, the situation was as follows:

1. X sells its patented drug P in Northern India. Another company Y’s subsidiary Z sells a similar drug in Southern India

2. X holds 10% share in Y and Y has a patent in Europe on its drug which is considered the closest prior art to X's patented drug P

3. X initially sold the drug P at INR 2.65 lakhs per month’s course, Z sold it at INR 2.62 lakhs per month’s course.

4. Thanks to a generic competitor, G’s low pricing tactics, Z is forced to cut down its price to INR 1.5 lakhs per month’s course. X too follows suit and brings down the price to INR 1.7 lakhs

Is there an arrangement between X and Y/Z? It’s possible to argue that since Y’s European patent came closest in terms of prior art to P, and yet Y chose not to challenge X’s patent on P, there appears to be a semblance of collusion between the two.

This combined with the fact that both X and Y/Z chose to divide the market among themselves without encroaching upon the other’s “territory” could further support the inference. And finally, the shareholding pattern of X along with “conscious parallelism” could lead a neutral observer could conclude that the whole thing smells fishy.

What this means is, one can call an arrangement an arrangement so long as the dots can be reasonably connected, even in the absence of a formal agreement or an overtly express behaviour between the parties.

Such reasonable connection of dots ought to give rise to a rebuttable presumption of anti-competitive behaviour since Competition law has a welfarist slant, since one of its objectives is to protect the customer from being taken for a ride.

This is different from stating that the Competition Act protects the consumer’s interest, since that would turn the Competition Commission into a Consumer Forum, which it is not. Stated otherwise, no player is expected to drive himself to sure extinction to extend a benefit to the consumer. Not just that, no player can push another player to extinction in the name of extending a benefit to the consumer.

I’ll discuss a few more issues concerning patents and competition in the coming posts.

Does the TM Act need an amendment vis-a-vis GIs?

2011-10-18T23:00:00.001+05:30

Certification marks per S. 2(c) of the Trade Marks Act, 1999, extensively defines its ambit to include a variety of goods and services that satisfy the standards set by the proprietor of the certification mark.

The legislation on Geographical Indications, namely The Geographical Indications of Goods {Registration and Protection} Act, (hereinafter the GI Act), to me, seems to be a branch out of the rationale behind certification marks, albeit to a niche segment of goods.

To put it somewhat crudely, the definition of “goods” that are protectable under the Act as a GI, appears to be a subset of the subject matter of certification marks. The provisions dealing in certification trademarks and the definition section of the GI Act, clarify that the scope of the certification trademark is broader than that of the GI Act, the latter focusing on agricultural goods, handicrafts and so on. However, the Trade Marks Act has not been amended to expressly exclude GIs, registered under the GI Act.

In fact, it is interesting to observe that the two Acts appear somewhat similar in nature. The most pertinent similarity, and in my opinion rightly so, is that the absolute grounds of refusal under S. 12(2) Trade Marks Act, 1999 are reiterated nearly verbatim, under S. 9 of the GI Act.

The overlap between the legislations, tends to create some unrest. If one were to consider the example of Darjeeling tea, which was earlier registered as a certification trademark, and was later registered as India’s first GI, the need for an express amendment appears somewhat clear.

The dispute on the international platform regarding the use of Darjeeling tea as a trademark received much attention, especially since jurisdictions including the United States grant registration to certification marks, but do not have an exclusive legislation governing the protection of GIs. However, little has been said about the overlap in the Indian trademark and GI legislation.

Needless to say, the Trade Marks Act, has in place a well instituted system of opposition. Further, the Act also under S. 25 allows the removal of trademarks, albeit having no mention of improper subject matter being registered.

While the grounds for relative grounds of refusal of a trademark under S. 11(3) disallows in general , registration of anything as a trademark that is liable to be prevented by virtue of any law, in particular the law of passing off and the law of copyright, the provision seems to have no mention of the law on Geographical Indications in particular.

To me, this appears rather strange, since the law on trademarks and GIs seem to be more closely related to trade and commerce, than most.

If one were to attack the jurisprudential roots, the law on GIs appears to bear roots in the pre-seventeenth Roman society and the right of commons. A Roman Cive had several rights, and these rights were vested in him, not as an individual but as pater familias or head of the family. The individual enjoyed rights because it was believed that only thus could the general ends of the community be realized. He had no claim in the rights and did not enjoy right as a matter of right but was conferred in him to attain the community’ common purpose. These rights were restrictive in nature, restricted in depth and scope.

Drawing an analogy to the concept of Geographical Indications as practiced and administered, the right in an “authorized user” seems to stem out of the fact that he is a member of a community producing a craft, textile, agricultural product or any other object qualifying as the subject matter of registration.

The right to use the GI tag is vested upon him by the Endowment Board, association or any other body that acts on his behalf as the registrant and the authorized user, as a consequence of being so, enjoys the right to further the common cause of the community viz. Commercial exploitation of the product through the use of the GI tag. In this regard, he does not enjoy the right as a matter of right, but as a member of the community with due restrictions placed upon his scope of use of the same.

Compared to this view, trademarks and other IP seem to confine to the concept of property as evolved with the “Theory of individuation” whereby the individual is demarcated as the bearer of the right.

This difference to my eyes is clarified all the more, because of the manner in which the Statement of Objects of the Acts are framed and hence an amendment seeking the express exclusion of GIs even more necessitated.

Representing oneself as No.1- Unfair trade Practice or not?

2011-10-09T10:34:00.002+05:30

As my tryst with the much loved world of audio-visual communication world continues, there is a thought that resonates every once in a while- The world of advertising and trademarks share a symbiotic sort of relationship, feeding on each other - While advertising facilitates the use of trademarks, it is the viable and undefied use in the course of trade and marketing that urges the registration of marks.

To me this seems like a vicious cycle, which shall only expand with the world of communication and electronics.

I recently saw an advertisement, claiming its product to be No.1. Obviously, the product wasn’t a leader in its segment, yet the confidence in the eyes of its models was worth appreciation. Not to blame them, they were playing their part, and in a commendable fashion.

As this stuck in my head, I skimmed through the Trademarks Act, 1999 to see if there was any recourse to such a representation. The Trade Marks Act, under S. 2 (1)(i) describes false trade description as:

“(I) a trade description which is untrue or misleading in a material respect as regards the goods or services to which it is applied, or…”

From a further reading of the Act,S. 2(1) (za) defines “trade description means any description, statement or other indication, direct or indirect,-…

… (ii) as to the standard of quality of any goods or services according to a classification commonly used or recognised in the trade; or…”

What I am unable to comprehend is, whether the representation of a brand or product as something as staunch as No. 1, without being backed by proper statistical verification by a government body, is in fact “material” or not?

Further on, the Consumer Protection Act of 1986 defines unfair trade practice as

(q)“unfair trade practice" means a trade practice which, for the purpose of promoting the sale, use or supply of any goods or for the provision of any service, adopts any unfair method or unfair or deceptive practice including any of the following practices, namely;—

(1)the practice of making any statement, whether orally or in writing or by visible representation which,—

(i)falsely represents that the goods are of a particular standard, quality, quantity, grade, composition, style or model;…

However, in the light of the fact that one is allowed to puff and use superlatives to describe one’s products, does expressing oneself as No.1 really attract a cause of action?

I am not sure. While there are multiple facets on which a brand may “consider” itself as the leader, the fact is that such representation, without proper corroboration as to the source, aspect etc., to my mind is indeed misleading. In fact to my eyes, this does not qualify as puffing or even misleading, but in fact can be termed as literal falsehood.

Another facet that seems interesting to me is that while unfair trade practices are barred by legislation, the Act is carefully worded to use the phrase “promoting the sale, use or supply of any goods or for the provision of any service”. Obviously, advertising does fall in this ambit, although not having been expressly included.

This makes me eager to find out, if in fact, any action for such representation has been taken, or has scope to face issues in court. Would Courts consider a proposition similar to that of comparative advertising cases? My guess would be not, since the question of disparagement of another may be absent, at least in a direct fashion. To me, the Courts should consider flagarant misrepresentation as an unfair trade practice.

While my research on case law is pending, a cursory view of the Trademarks Act, 1999 brings to notice Chapter XII which deals in penalties for false trade descriptions. Section 103 under the same imposes penalties for “applying false trademarks, trade descriptions, etc.”. The provision talks about false application, but there seems to be no false representation of the quality, status etc. of a mark.

However, a flip side to such an argument would be that rankings and claims so being made, is also a manner of self-appreciation! To my mind, however, the use of rankings should be differentiated from the use superlatives to describe oneself, sheerly to give consumers the opportunity to statistically verify the claim.

As I say this, the irony is that hardly ever do the large brand owners portray themselves as No.1. Perhaps, they never need to.

That having been said, would a large brand owner move against a smaller player for such a representation, or would they consider such a move a wasteful exercise? Would it be more fruitful to invest the time and money in more aggressive marketing, especially when there is no direct reference or disparagement of the product?

This I guess is an answer for marketing strategists to consider.. Perhaps, we will hear from one of you here..

Stale News: Australia Moots Plain Packaging of Tobacco Products

2011-10-08T02:28:00.002+05:30

Most Indians remember the brouhaha over the former Health Minister, Mr.Anbumani Ramadoss’s repeated warnings to celebrities against smoking on screen, and the promulgation of Cigarettes and Other Tobacco Products (Prohibition of Advertisement and Regulation of Trade and Commerce, Production, Supply and Distribution) Act-2003, which banned, at least on paper, smoking in public places.

Now Australia has taken a few measures to reduce smoking rates, by proposing a law on watering down the packaging of tobacco products. The proposed legislation is called Tobacco Plain Packaging Bill, 2011, and a consultation paper on the bill is available here.

The stated objectives of this legislation are:

(a) to improve public health by:

(i) discouraging people from taking up smoking, or using tobacco products; and

(ii) encouraging people to give up smoking, and to stop using tobacco products; and

(iii) discouraging people who have given up smoking, or who have stopped using tobacco products, from relapsing; and

(iv) reducing people’s exposure to smoke from tobacco products; and

(b) to give effect to certain obligations that Australia has as a party to the Convention on Tobacco Control.

To this end, the legislation intends to regulate the packaging and appearance of tobacco products in order to:

(a) reduce the appeal of tobacco products to consumers; and

(b) increase the effectiveness of health warnings on the packaging of tobacco products; and

The goals of this proposed law are certainly laudable, and there’s no two ways about it. But, the question is, will this law run afoul of TRIPS by denying manufacturers of tobacco products the right to distinguish themselves from their competitors? Would this law amount to a technical barrier to trade? Is there no other way of tackling the tobacco menace other than by depriving manufacturers of the right to attract eyeballs?

Some of these questions seem to have been raised by the Dominican Republic in its objections to the proposed law. Further, the Dominican Republic has said that introduction of plain packaging might lead to predatory pricing, thereby facilitating greater tobacco consumption, besides making counterfeiting easier.

Australia, on the other hand, seems to have fallen back on the “public health” argument to justify these proposed measures. It said that plain packaging and the potential for counterfeiting may make it imperative for manufacturers to introduce anti-counterfeiting labelling, which would make cigarettes expensive, and hence bring down smoking rates.

Among the nations which have supported Australia’s stance are India, Brazil and Cuba, which have taken the view that countries have a right to take a decision in the interest of public health without IP becoming a stumbling block. This view draws support from the 2001 Doha Declaration on TRIPS and Public Health.

This issue promises to turn out to be an interesting one. We’ll certainly keep our eyes and ears peeled to developments on this front.

Steve Jobs: What Did He Mean for Innovation?

2011-10-07T03:52:00.004+05:30

I don’t intend to ask what did innovation mean for Steve Jobs, I am interested in understanding what does a colossus like Steve Jobs mean for innovation. Whether ideas maketh a man or vice-versa is a never-ending squabble, but for the average joe like me, a man who lives and breathes his ideas helps make the idea look less abstract, hence more doable. (A simile which I can think of, is the difference between idol worship and devotion to a formless universal soul)

I read this short insightful piece on Steve Jobs by Ajit Balakrishnan (founder of Rediff.com) published last month in the Business Standard, where he compared Jobs to stalwart filmmakers like Ingrid Bergman and Alfred Hitchcock. He called Jobs the “auteur CEO”, who “lifted the modern firm out of the Industrial Age and brought it into the Information Age.”

Let’s bear in mind that Jobs was not the stereotypical unsuccessful rebel innovator who failed trying to change the “system”. By most counts, Jobs was an extremely successful entrepreneur, which words typically are expected to conjure images of someone who is concerned solely about the rewards waiting at the end of the quarterly rainbow.

In complete contrast to this Orwellian image, despite being at the helm of a multinational, Jobs was and is seen by his peers and millions of tech aficionados as essentially the maverick innovator. I don’t think this was a carefully cultivated image, because masks have a tendency to come off at some point or the other, considering the media glare these days. This means for the most part, the man was true to his reputation.

Why is his success as an entrepreneurial innovator peculiar? I think the answer lies in the fact that most organizations which start off with that idealistic innovative spark inevitably lose that spark as they grow, because there comes a point where growth and shareholder value prevail over that spirit of idealism.

In contrast, Apple reflects Jobs’ obsession with fundamentals- innovative products, products which force the market to put on its thinking hat more than it is used to, certainly more than it wants to, but actually as often as it ought to.

For Jobs, the size of the company did not have a bearing on its innovative capabilities so long as it had its heart in the right place, which means the one in whose hands the reins are, must himself believe in innovation as THE driver, and not just one of the drivers of change. This challenges the oft-spouted wisdom that innovation is essentially a virtue peculiar to SMEs.

That an entire industry was forced to play catch-up with one man’s vision and zeal is truly an amazing feat, and that he did this day in and day out with such incredible consistency, speaks volumes of the man. What is also relevant is that Jobs’ life is irrefutable proof of the fact that success in the conventional sense need not come with adherence to market conventions.

In fact, this “verity” has been turned on its head thanks to Jobs, because his life also proves that success achieved through conventional means, in most cases, too is conventional, and hence not out of the ordinary.

“Innovation” has truly benefited from Jobs because he is now a realistic icon for young impressionable minds in T-schools (technology schools) who are tempted to opt for the easy cushy “consulting” careers, and who slowly relegate their engineering skills to the status of “interests”/”hobbies”.

Jobs has given these young minds enough reasons to pursue careers in the tech industry, and in times like ours when major economies are racking their brains about ways of bringing back innovation at the top of the priority list, they couldn’t have asked for a better role model than Jobs.

Here’s a quote from this visionary’s life which in a nutshell captures the essence of his approach to life:

“Being the richest man in the cemetery doesn’t matter to me … Going to bed at night saying we’ve done something wonderful … that’s what matters to me.”

In honour of this great man, we will host his videos in our videos link for a month starting today.

Can Patent Office Issue Reminders in Opposition Proceedings?

2011-10-06T02:39:00.001+05:30

During the course of research on a related issue, I ended up asking myself this question- Can the Patent Office issue reminders to applicants/patentees in pre-grant and post-grant oppositions before the prescribed period ends, in situations where no counter-statement has been filed by the applicant/patentee after having received the notice of opposition?

My answer would be that although there does not appear to be a specific provision on this point (I could be wrong here), it would be inappropriate and impermissible under the law for the Patent Office to send reminders to the applicant/patentee if he hasn’t filed his reply despite having received the notice of opposition.

The reason for this is that once the notice of opposition has been received by the applicant/patentee, it is for him to evince interest in the proceedings by filing a reply along with his evidence. In the event he fails to do so, an inference of abandonment could be legitimately drawn against the applicant/patentee.

After all, if the Patents Act clearly envisages a specific consequence of abandonment, which has benefits for third parties/competitors and public interest, the Patent Office ought not to issue reminders to the applicant/patentee urging him to file a reply. Issuing reminders to either party would amount to clear transgression of powers and violation of the intention of the Act.

The Tacking Doctrine- The Stitch in time that may Save a Brand!!!

2011-10-02T00:25:00.002+05:30

Logos, Brands and advertisements often stay in our memory like superglue. Interestingly, some of the best ones are those, whose products’ popularity although may have declined over time, yet the advertising and branding are so strong, that they continue to build an instant connection with the consumer.

Such a strategy in the world of advertising related trademark law is often known as Tacking. Literally, like the stitch, the doctrine deals in relatability to a previous advertisement an continuing a similar train of thought, even as the product, brand et al evolve.

Typically used in the context of logos, the doctrine mandates that when updating a logo (or mark), a company must “walk the line” between the need to teach the consuming public that the new logo is a continuation of the old logo, and the need to reinforce the new logo in the public’s consciousness.

While tacking back may be done in various ways, the crux is to maintain a connection with the receiving audience, while still reminding them of the history, quality and age of a product.

Betty Crocker, in my opinion, the maker of one of the finest cake mixes (I know this cause I am disastrous at baking!) has over time changed the face of the lady portraying the image of Betty Crocker. As the image depicts, with time, she has changed her skin colour, hair colour, hair style, but continues to sport a red cardigan, a white shirt and many a time a string of pearls. To my knowledge, Betty has undergone nine makeovers, from 1927 to 1996.

For those of us who are familiar with the salt brand Morton, the little girl with an umbrella and salt flowing out on a rainy day, (to depict that deliquescence has been eliminated), the logo is another classic example of a print advertisement/ logo evolving over time. In the Indian context, it is soap brands like Lifebuoy and Lux come to my mind that have subtly changed their logo over time.

Extrapolating this doctrine further, I would say that tacking could somewhat be used onto the audio visual medium as well. The best example that comes to my mind is that of Nirma. As far as the washing powder goes, while the ladies have evolved and become modern, the colours on the packaging becoming brighter, the singer’s voice becoming somewhat shriller, the lyrics and music interestingly still strike a chord and associate back to the yesteryears of television and cloth washing.

Similarly, Liril soap has also had its share of Liril girls, yet the jingle, jungle, waterfall et al in the advertisements continue to be maintained.

This concept in the context of trademarks to my mind can have a major impact. Although registration of a trademark is prima facie evidence of its existence, in my view, the use and manner of use can also be of significant consequence.

A theory such as tacking back, whether accompanied by registration of subsequent marks or not, can come to good use, especially when moving an action of dilution and passing off. Dilution, as we know it, consists of blurring and tarnishment as its subsets.

While an infringer may be tempted to use a mark similar to an older mark, such that the infringing mark merely blurs a previously used mark, the use of a tacking back argument can perhaps help further a brand association and consumer confusion argument in Courts.

On the other hand, if one were to tarnish an older mark, the tacking back doctrine may again come to good use. To cite an example, although Coca Cola no longer uses Enjoy Coke as much or as prominently as it used to, if one were to reintroduce the once popular Enjoy Cocaine poster, Coca Cola would still, in my humble opinion, have a viable case.

Although tacking may appear to be a concept relevant only to people from the marketing and advertising arena, its prominence as a trademark related aspect ought not to be ignored. Pertinently in jurisdictions where “use” is a ground to grant trademark rights, it is common that trademark attorneys for litigation as well as PTO related proceedings use advertising as a piece of evidence.

Even though a jurisdiction such as ours grants presumption of validity upon registration, in order to assert common law rights, a party that has wisely used its trademark in a continual fashion, may be able to assert a better case.

To my eyes, the doctrine of tacking is truly a stitch in time saves nine scenario. The downside however to practicing this form of branding, is that its true result and impact can only be observed when a product is guaranteed to maintain a really long market presence.

This having been said, we cannot ignore the fact that we still have brands like Amul and Parle-G, surviving just as vivaciously as years back, that haven’t made any changes whatsoever to their brand ambassadors!!!

Battle of the Bands...

2011-09-25T11:48:00.003+05:30

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

2011-09-25T03:12:00.003+05:30

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.

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

2011-09-24T16:57:00.002+05:30

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.

Joinder of Multiple Defendants in a Patent Infringement Suit

2011-09-23T23:36:00.004+05:30

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.

Can Interested Parties File a Joint Revocation Petition?

2011-09-14T00:28:00.004+05:30

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.

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

2011-09-11T00:30:00.000+05:30

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.

Stale News: Unitary Patents in Europe

2011-09-08T02:59:00.002+05:30

On June 27^th 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.

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

2011-09-04T19:49:00.039+05:30

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 affected...so 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 was 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.