Draft National IPR Strategy Discusses Future Regimes for Utility Models and Trade Secrets

In September this year, there were news reports of a National IPR strategy being prepared by the government. The 25-page Discussion Paper on the National IPR strategy is available here and the feedback received from stakeholders is available here.

On Pages 20 and 21 of the Paper, there is a discussion on creation of new IP rights such as Utility models and trade secrets to "address the specific needs of the country and existing gaps". Following are the relevant extracts from the paper on the need for creation of a framework for these rights:

Protection of Utility Model

48. Indian is one of the largest markets in the globe, and while advanced concepts borrowed from developed countries find their audience in India, the bulk of the trade is centered around indigenous products and services. A salient feature of such products and services is incremental innovation - either in technology or business models. Introduction of a separate legal regime that recognizes and protects these incremental improvements which are otherwise not fit for patent grant can address this Indian requirement.

Utility Patents or Utility Models with their less stringent patentability criteria, and faster examination/grant although with shorter term of protection of 5-7 years could also be an efficient and a cost effective way to incentivize incremental innovation and encourage creation of IPRs. Needless to say, there could however be certain sector specific exemptions to ensure that objectives and principles enshrined in Article 7 and 8 of the TRIPS Agreement are respected and followed.

49. A glaring gap in Indian IP system is the lack of awareness and hence adoption of formal methods of IP creation which are expensive from the point of view of individual innovators and small industry units. Utility patents are an answer as they can potentially bridge this gap by reducing the effort, time and cost, which are considered the key entry barriers to creation of IPRs.

Consequently, in the longer term, a utility patent system is bound to develop awareness on benefits of procuring patents which have more stringent requirements of inventive step. Such a model can especially be useful for small industry units, schools and colleges, NGOs and  thousands of grass-root innovators who are silently transforming the lives of the under-privileged and under-empowered.

Protection of Trade Secret

50. Any confidential business information which provides an enterprise a competitive edge may be considered a trade secret. Trade secrets encompass manufacturing or industrial secrets and commercial secrets. The unauthorized use of such information by persons other than the holder is regarded as an unfair practice and a violation of the trade secret.

Depending on the legal system, the protection of trade secrets forms part of the general concept of protection against unfair competition or is based on specific provisions or case law on the protection of confidential information.

51. The subject matter of trade secrets is usually defined in broad terms and includes sales methods, distribution methods, consumer profiles, advertizing strategies, lists of suppliers and clients, and manufacturing processes. While a final determination of what information constitutes a trade secret will depend on the circumstances of each individual case, clearly unfair practices in respect of secret information include industrial or commercial espionage, breach of contract and breach of confidence would come within its ambit.

52. At present trade secret is protected through the contract law in India and is part of the concept of protection against unfair competition. Trade Secret is an important form of intellectual property and most innovative companies rely upon this confidential/proprietary information to gain business advantage. A predictable and recognizable trade secret regime will improve investor confidence and create a facilitative environment for flow of information.

Snippet: Supreme Court Issues Notice to Govt. in Student's PIL Challenging Section 66A of the IT Act, 2000

The legality of Section 66A of the Information Technology Act, 2000 (the provision has been interpreted on this blog here and here), has been challenged in a PIL (Public Interest Litigation) before the Supreme Court by a Delhi-based law student, Ms.Shreya Singhal.

The PIL has been admitted by the Chief Justice of India, Hon’ble Justice Altamas Kabir. The Apex Court has issued notice to the Government, and the Attorney General has been asked to respond tomorrow, November 30, 3012.

Meanwhile, in the aftermath of the arrests of two girls over a Facebook comment, the Government seems to have finally woken up to the mischievous application of the provision, and has reportedly issued guidelines governing the application of the Section 66A.

According to news reports, prior approval from an officer of DCP level in rural areas and IG level in metropolitan areas will need to be sought before a complaint is registered under Section 66A. The practical efficacy of these guidelines has been questioned by practitioners of the law.

For now, it would be interesting to see the Government's stance before the Supreme Court on the provision tomorrow. 

Snippet: ToI Reports Sutent/Sunitinib Matter Remanded to the Patent Office by Supreme Court

The Times of India has today reported that the Supreme Court has remanded the Sutent patent matter to the Patent Office for a hearing, and also set aside the injunction on Cipla's Sunitinib. This means the revocation of the Sutent patent of Sugen Inc has been set aside. The effect of this on proceedings for alleged infringement remains to be seen.

IPAB Dismisses Astra Zeneca’s Appeal Against Order in Review Petition

In an order dated November 26, 2012, the IPAB dismissed Astra Zeneca’s appeal against an order passed by the Controller in a review petition. I thank Mr.Bharat S.Kumar, advocate and friend for bringing this development to my attention!

The ground for dismissal was that there is no provision for appeal against an order passed in a review petition. We had earlier discussed an order passed by the IPAB on these lines in October.

The IPAB also observed that the grounds of review raised by Astra Zeneca in its review petition before the Controller were not in the nature of review, but more in the nature of an appeal.

The IPAB noted that a party cannot seek re-hearing of a matter under the garb of review unless there is an error which is apparent on the face of the record. This position is consistent with the principles laid down by the Supreme Court for entertaining a review petition under Order 47 of the Code of Civil Procedure.

Following is the observation of the Supreme Court on scope of review:

It is well settled that review proceedings have to be strictly confined to the ambit and scope of Order 47 Rule 1 CPC. In Thungabhadra Industries Ltd. Vs. The Government of Andhra Pradesh (1965 (5) SCR 174 at 186) this Court opined:

"What, however, we are not concerned with is whether the statement in the order of September 1959 that the case did not involve any substantial question of law is an "error apparent on the face of the record". The fact that on the earlier occasion that Court held on an identical state of facts that a substantial question of law arose would not per se be conclusive, for the earlier order itself might be erroneous. 

Similarly, even if the statement was wrong, it would not follow that it was an "error apparent on the face of the record", for there is a distinction which is real, though it might not always be capable of exposition between a mere erroneous decision and a decision which could be characterised as vitiated by "error apparent."  

A review is by no means an appeal in disguise whereby an erroneous decision is reheard and corrected, but lies only for patent error."

Again, in Smt. Meera Bhanjia Vs. Smt. Nirmala Kumari Choudhury (1995 (1) SCC 170) while quoting with approval a passage from Abhiram Taleshwar Sharma Vs. Abhiram Pishak Sharma & Ors. (1979 (4) SCC 389), this Court once again held that review proceedings are not by way of an appeal and have to strictly confined to the scope and ambit of Order 47 Rule 1 CPC.

Under Order 47 Rule 1 CPC a judgment may be open to review inter alia if there is a mistake or an error apparent on the face of the record. An error which is not self evident and has to be detected by a process of reasoning, can hardly be said to be an error apparent on the face of the record justifying the court to exercise its power review under Order 47 Rule 1 CPC.

In exercise of the jurisdiction under Order 47 Rule 1 CPC it is not permissible for an erroneous decision to be "reheard and corrected". A review petition, it must be remembered has limited purpose and cannot be allowed to be "an appeal in disguise."

Snippet: Indian Express Reports on SC’s Sunitinib Order

I had blogged yesterday on the setting aside of the Sutent revocation order, and lifting of injunction on Cipla from manufacturing its drug Sunitinib.

Today, the Indian Express has reported on lifting of the restraint on Cipla. The news report, however, does not mention anything about setting aside of the revocation order of the Sutent patent. I guess only a reading of the SC's order will clarify the true position. 

Breaking News: Supreme Court Sets Aside Revocation of Patent on Sunitinib?

The news is just rushing in about the Supreme Court proceedings in the Sunitinib matter. It appears that the Apex Court has set aside the order of revocation of the patent on Sunitinib.

Also, from what I am told, the Delhi High Court’s order restraining Cipla from marketing its drug too has been set aside.

I thank a good friend and well-wisher of the blog for sharing this information with me!

Readers may recall that in an earlier post, I had blogged on dismissal of Cipla’s appeal against the Single Judge’s order restraining Cipla from marketing its drug, without staying the revocation of the Sunitinib patent.

Let’s wait for the order of the Supreme Court to understand the reasons for setting aside the Sunitinib revocation, and for allowing Cipla to sell its drug.

Breaking News: Chennai Patent Office Rejects Yet Another Novartis Application

In a 5-page order dated November 20, 2012, the Chennai Patent Office has refused to grant a patent to Novartis in its application 2208/CHENP/2006 on "A PHARMACEUTICAL COMBINATION FOR BRAIN DEGENERATIVE  DISEASES”.

The amended Claim 1 read as follows:

l.  A pharmaceutical  combination  comprising

a) a first agent which is 2-amno-2-12-(4-octylphenyl)ethyl[propane-1,3-diol in free form or in a phannaceutically acceptable  salt form, or FTY72O-phosphate, or 2-amino-2-f2,-(4-octylphenyl)ethyl]propane-l,3-diol hydrochloride, and

b) a second agent useful in the alleviation or teatment of brain degenerative diseases or progressive dementia,  selected from an AIvIPA receptor agonist, a noobopic agent such asi cinnarizine, nimodipine, donepezil  hydrochloride, rivastigmine.  galantamine hydrobromide, dihydroergotoxin, nicergoline, piracetame, extacts from Ginkgo leafs, pentiffllh,  pyritinol,  vincamine or vinpocetine,  and a Painkiller.

The application appears to have been rejected on grounds that the amended claim (pursuant to objections in the FER) did not have adequate support in the specification, and lacked clarity.  Further, the invention claimed in the application was deemed as being obvious in light of the prior art, and deficient in exhibiting synergistic effect of the combination of ingredients used.

Again, the absence of a detailed discussion on the prior art cited by the Patent office makes it difficult to critique/appreciate the order.