Guest Post: Gillette Defence in India

Here's a Guest Post on the application of Gillette Defence in India by Avinash Kumar Sharma, a litigator from the High Court of Delhi:

The concept of a Gillette Defence was put forth by Lord Moulton in the case of Gillette safety razor company v. Anglo American Trading Company Limited in the year 1913. The concept kicks in whenever a defendant in a suit for patent infringement takes the plea that the product or process implemented by it is covered by prior art. It is based on the premise that there can be no infringement of a patent whose invention is covered by a lapsed patent or an invalid patent. In fact, enforcement of such a patent would amount to encroaching on the realm of commons and granting monopoly over it.

Terrell on the Law of Patents has summed up Gillette Defence as follows:

"Infringement not novel" (Gillette defense) Since no relief could be obtained in respect of an invalid patent, if the defendant could prove that the act complained of was merely what was disclosed in a publication which could be relied on against the validity of the patent, without any substantial of patentable variation having been made, he had a good defense. This is the so-called Gillette defense arising out of the world of Lord Moulton in Gillette Safety Razor Co. VS. Anglo American Trading Co. where he said: "I am of the opinion that in this case the defendant's right to succeed can be established without an examination of the terms of the specification of the plaintiff's letters patent. I am aware that such a mode of deciding a patent case is unusual, but from the point of view of the public it is important that this method of viewing their fights should not be overlooked. In practical life it is often the only safeguard to the manufacturer. It is impossible for an ordinary member of the public to keep watch on all the numerous patents which are taken out and to ascertain the validity and scope of their claims. But he is entitled to feel secure if he knows that that which he is doing differs from that which has been done of old only in non- patentable variations such as the substitution of mechanical equivalents or changes of material, shape or size. The defense that 'the alleged infringement was not novel at the date of the plaintiff's letters patent,' is a good defense in law, and it would sometimes obviate the great length and expense of patent cases if the defendant could and would put forth his case in this form, and thus spare himself the trouble of demonstration on which horn of the well-known dilemma the plaintiff had impaled himself, invalidity or non-infringement."

It appears that this defence was invoked and endorsed for the first time in India in the case of Ravi Raj Gupta v. Acme Glass Mosaic Industries. In the said case, the principal defence invoked by the defendant was that it was using a well-known process for manufacturing tiles, which was covered by a lapsed patent. Holding that the patent sought to be enforced was prima facie not an invention within the meaning of Section 2(j) of the Patent Act 1970 in view of the defence, the Court refused to grant the Plaintiff interim injunction.

This defence has also been accepted by the High Court of Calcutta in the case of Hindusthan Lever Limited v. Godrej Soaps Limited and by the Delhi High Court in  J Mitra v Kesar Medicaments in 2008. In the latter judgement, the Delhi High Court held thus:

“A perusal of the decision in the cases of Ravi Raj Gupta and Gillette Safety Razor Co. cases (supra) shows that where it is shown that the act complained of is what was disclosed in a prior publication, which can be relied on against the validity of the patent, and no patentable or substantial alteration has been made in respect thereof, there is a good defense.”

In the facts of the case though, the defendant was unable to show that the patented invention was covered by the prior art cited by it. The practical consequence of invoking the Gillette Defence is that the scope of the trial can be limited to the said defence since it is assumed that but for the defence, the defendant does not refute the allegation of infringement. This would effectively require the defendant to lead evidence.

Guest Post: Issues with the Proposed Privacy Legislation

Our guest blogger, Ms.Apurba Kundu, who had earlier blogged on exhaustion under the Plant Variety Protection Act, now shares her views on the proposed Privacy Act.

Issues with the Proposed Privacy Legislation

Increased policing on the internet and the ability to trace people has resulted in generating a chorus on the need for privacy legislation. A report on such a proposed legislation, called the Privacy Act, was submitted by Justice A.P. Shah on October 16, 2012. The expert group led by Justice Shah has identified a set of recommendations which the government may consider while formulating the framework for the proposed Privacy Act.

Personal Identifiers or Personally Identifiable Information (PII) have been discussed at length in the report. Personal identifiers are essentially a type of personal information, but unlike intimate information such as ‘sexual orientation’ or annual income, personal identifiers are intended to uniquely identify an individual and to reveal any additional information that is attached to the identifier or generated by the use of the identifier.

Examples of Personal Identifiers in India may be the UID number, Personal Account Number, Passport Number etc. Vast amounts of information can be marshaled through the use of these personal identifiers making it possible for complete profiles to be created of individuals and to track them across databases.

Legislations such as the UID Bill, Passport Act, and Income Tax Act do not specifically relate to personal identifiers, although they make use of such identifiers. Consequently, although a large number of personal identifiers are being collected, it is not clear as to how the information so collected is preserved.

It would not be far-fetched to assume that both governmental and private sector organizations could access and use information directly or indirectly generated by personal identifiers for multiple purposes without explicit authorization from individuals. As more and more databases are unified with the UID number, the question of personal identifiers becomes even more relevant.  

In the context of preserving the integrity of such information, it is relevant to note that Sections 43A and 72A of the Information Technology Act, 2000 clearly require protection of personal information which is collected. Thankfully, Section 11 of the RTI Act too forbids disclosure of information relating to or supplied by a third party which has been treated as confidential by the third party.

However, the report does not discuss non-PII. Besides the Shah Committee report on Privacy Act, even the Approach Paper for legislation on privacy prepared by Mr. Rahul Matthan which identifies current challenges posed by Personal Identifiers or Personally Identifiable Information (PII), does not mention non-PII.

Protection of non-PII is equally important since such information can also be used to identify individuals. We already know that IP addresses can be readily linked to individuals. It is also possible that information deemed as non-PII at one point in time may assume the status of PII at a later point in time. An interesting paper titled “The PII Problem: Privacy and a new concept of personally identifiable information” discusses the issue of non-PIIs in detail.

As technology develops, the treatment of information as PII or non-PII may turn on the context of use, and this complicates the issues associated with distinguishing between PII and non PII. In the age of behavioral marketing strategies, the implications of non-PII that can be used to identify potent customer base without the knowledge and consent an individual are huge. Therefore, it would help to provide for appropriate safeguards in the proposed Privacy Act for protection and use of non-PIIs as well.  

An interesting study was done by two computer scientists, Arvind Narayanan and Vitaly Shmatikov of Netflix movie rentals. Netflix supposedly de-identified database of ratings publicly available as part of a contest to improve the predictive capabilities of its movie recommending software. They found a way to link this data with the movie ratings that participating individuals gave to films in the Internet Movie Database (IMDB) and concluded thus:

 “Given a user’s public IMDB ratings, which the user posted voluntarily to selectively reveal some of his . . . movie likes and dislikes, we discover all the ratings that he entered privately into the Netflix system, presumably expecting that they will remain private.”

Clearly, non-PIIs too need protection. Information obtained through cookies and secondary sources can easily be matched with registration data, IP addresses etc. Whenever a marketing technique makes an individual identifiable by others and relies on his/her identity, the law should provide him/her with relief.

There are stereotypes that Facebook generation is not too concerned about privacy, but individuals should have legal rights to know what is done with their PII and non- PII. Addressing non-PII related issues in the Privacy Act will increase obligations concerning data security, transparency, and data quality, and rightly so. 

Guest Post: Exhaustion in the Context of Seeds

I have discussed the doctrine of exhaustion in several posts on this blog. Below is a short guest post from Ms.Apurba Kundu on the issue of exhaustion with reference to protected seed varieties under the Plant Variety Protection and Farmers Rights Act, 2001. Apurba has a Bachelors degree in biotechnology engineering and a Bachelors in law from IIT Kharagpur. Apurba loves to read and hopes to teach someday. 

Now, to the Guest Post.

Exhaustion in the Context of Seeds

The US Supreme Court will start hearing arguments on patent exhaustion on February 19, 2013, specifically on whether the Federal Circuit Court of Appeals erred in refusing to find patent exhaustion – a doctrine which eliminates the right to control or prohibit the use of an invention after an authorized sale. The doctrine of exhaustion would be analyzed by the Court in the specific context of self-replicating technologies such as patented seeds. 

A case on similar lines was heard by the Supreme Court of Canada where it was held that the licensor/patentee could restrict sale of seeds produced from his patented invention and is entitled to impose contractual obligations, such as a prohibition on saving seeds.

This led me to think about the position of Indian Law on this issue.

The Plant Variety Protection and Farmers Rights Act, 2001 (“PVP Act”) is a very progressive, pro-developing country legislation. The relevant provision of the Act is Section 39(1)(iv), which throws light on the issue of exhaustion. The provision reads thus:

a farmer shall be deemed to be entitled to save, use, sow, resow, exchange, share or sell his farm produce including seed of a variety protected under this Act in the same manner as he was entitled before the coming into force of this Act: Provided that the farmer shall not be entitled to sell branded seed of a variety protected under this Act.

Section 2(za)(iii) of the act defines “variety as follows”:

variety means a plant grouping except microorganism within a single botanical taxon of the lowest known rank, which can be considered as a unit with regard to its suitability for being propagated, which remains unchanged after such propagation, and includes propagating material of such variety, extant variety, transgenic variety, farmers’ variety and essentially derived variety.

This means the traditional right of a farmer to save seeds for the next season is protected. However, the farmer is enjoined from selling seeds which are owned by third parties.

Also, Section 39(2) of the Act entitles farmers to claim compensation from owners of registered seeds in case the performance of the seed fails to match the expected performance as disclosed by the right owner.

While discussing the PVP Act, it is important to discuss the Seeds Bill, 2004 too which has been pending since December 2004. New amendments were proposed by the government to the Bill in April 2010 and November 2010, which incorporated several recommendations of the Parliamentary Standing Committee. This bill also doesn’t restrict the farmer’s right to use or sell his farm seeds and planting material, provided he does not sell seeds which are owned by a third party.

Importantly, transgenic varieties of seeds can be registered only after the applicant has obtained clearance under the Environment (Protection) Act, 1986.  Farmers buying seeds are covered under Consumer Protection Act, 1986 and all registered varieties, seed producers, distributors and vendors have to disclose the expected performance under certain given conditions. If the seed fails to perform to expected standards, the farmer can claim compensation from the dealer, distributor or vendor under the Consumer Protection Act, 1986.

Maybe it’s high time that the Seeds Bill was passed by the Parliament. Meanwhile, farmers in faraway lands must be thinking it would have been better if they were Indian farmers. 

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

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

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

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

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

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

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

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

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

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

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

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

Domestic Courts and "Foreign" Infringement: What is the Law?- II

In the previous post, Mihir Naniwadekar had examined the background to the Mocambique rule, and he now analyses the decision of the UK Supreme Court where issues pertaining to the applicability of the rule to intellectual property arose.

In Lucasfilm, Counsel for the Appellant before the Supreme Court, Jonathan Sumption QC, framed the issue narrowly: the court notes, “the appellants do not take issue with the application of the Moçambique rule to intellectual property so far as it is limited to patents and other intellectual property rights dependent on the grant or authority of a foreign State, and to cases where what is in issue is the validity of the patent, as opposed to its infringement.”

By framing the issue thus, counsel was able to steer the Court away from concerns over the act of state doctrine, and concerns over comity. Indeed, in the facts, this narrow proposition would also be sufficient for the appellants, for on the facts (as emerging from Mann J’s judgment at first instance), “the substantial dispute has always been about the ownership of the relevant copyrights and their infringement rather than about their subsistence.”

[The detailed facts are interesting in their own right, especially for Star Wars fans, but for the purposes of our present discussion an elaboration of the facts would serve no purpose other than lengthening an already long post. The interested reader should refer to the judgment of Mann J. at first instance, which is reported in (2008) EWHC 1878 (Ch)]

The Respondents argued that the Mocambique rule, as extended in Hesperides, was still good law; and continued to apply to “claims for infringement of all foreign intellectual property rights, including copyright, because such claims are essentially local”. Consequently, it was argued that such claims “must be brought in the place where the rights have been created, irrespective as to whether there is any claim to title…”

The Supreme Court rejects this argument in an illuminating passage quoted below (from the combined judgment of Lord Walker and Lord Collins):

“We have come to the firm conclusion that, in the case of a claim for infringement of copyright of the present kind, the claim is one over which the English court has jurisdiction, provided that there is a basis for in personam jurisdiction over the defendant… It is clear that much of the underpinning of the Moçambique rule and the decision in Potter v Broken Hill Pty Co Ltd has been eroded… 

The basis for what remains of the rule was said by the House of Lords in the Moçambique case to be that controversies should be decided in the country of the situs of the property because the right of granting it was vested in ‘the ruler of the country’ and in the Hesperides case to be the maintenance of comity and the avoidance of conflict with foreign jurisdictions. It is possible to see how the rationale of the Mocambique rule can be applied to patents, at any rate where questions of validity are involved.

For example the claims might touch on the validity of patents in sensitive areas, such as armaments, and that no doubt is part of the rationale for article 22(4) of the Brussels I Regulation. But it is very difficult to see how it could apply to copyright. It is true that copyright can involve delicate political issues.

Thus in a very different context Brightman J had to deal with the international consequences for copyright protection of the samizdat circulation in the Soviet Union of Solzhenitsyn's August 1914 without having been passed by the Soviet censor: Bodley Head Ltd v Flegon [1972] 1 WLR 680.

But such cases can be dealt with by an application of the principles of public policy in appropriate cases…There is no room for the application of the act of state doctrine in relation to copyright in this case, even if (contrary to the view expressed above) actions of officials involved with registration and grant of intellectual property rights were acts of state.

The requirement to apply for copyright registration in the United States is limited to the "copyright in any United States work" which in practice means that published works first published outside the United States are exempted from compliance with US registration provisions.

In the present case the copyrights were treated as United States works and were registered. Registration is a pre-requisite to proceedings in the United States: United States Copyright Act, section 411. But the unchallenged evidence before the judge in this case was that registration was not a prerequisite to subsistence but only to suit, and it was possible to register at the time of suit. Consequently the provision is purely procedure…”

The Court thus held that Tyburn was wrongly decided and that in personam jurisdiction could be sufficient to bring an action for infringement of a foreign copyright. The case also highlights the conceptual problems with applying real property based reasoning to intellectual property, and further indicates that the differences between the type of intellectual property in question require nuanced consideration.

Insofar as infringers are concerned, beware: in some cases, the long arm of the law is so long that it can extend to overseas infringement also!

Domestic Courts and "Foreign" Infringement: What is the Law?- I

I am happy to bring these series of guest posts from Mihir Naniwadekar, a good friend of mine whose mind I have immense regard for. Mihir passed out of National Law School, Bangalore last year and has been practicing before the Bombay High Court. 

Mihir is a prolific blogger himself who, besides running his own blog, is also a contributor to the Indian Corporate Law blog. Without much ado, here are Mihir’s thoughts on a domestic court’s power to exercise its jurisdiction over a person resident within its territory for acts of infringement committed in a foreign land.

Domestic Courts and "Foreign" Infringement: What is the Law? 

Does a domestic Court have the jurisdiction to enforce a foreign copyright on the basis of in personam jurisdiction over the alleged infringer? This seemingly straightforward question was at the heart of the matter in a recent decision of the United Kingdom Supreme Court in Lucasfilm v. Ainsworth [2011]UKSC 39.

The case also involved intricate issues over the interpretation of UK statutes; this series of posts, however, discusses only the private international law issue.

The issue was this: “whether the English court may exercise jurisdiction in a claim against persons domiciled in England for infringement of copyright committed outside the European Union in breach of the copyright law of that country?” The Court of Appeal had held that foreign copyrights are not justiciable in an English court, on account of the Mocambique principle.

By way of some background, it will be useful to note that the Mocambique rule was one which developed in the context of land (thus, in a sense, Lucasfilm involved intricate questions over how far intellectual property is similar to other (real) types of property). The Mocambique rule refers to the rule in British South Africa Co v Companhia de Mocambique [1893] AC 602.

In the words of Dicey & Morris (Rule 39, 1^st edition, 1896), this case was cited as the main authority for the proposition that an English Court “has no jurisdiction to entertain an action for (1) the determination of the title to, or the right to the possession of, any immovable situate out of England … or (2) the recovery of damages for trespass to such immovable…”

Since then, the rule has been elevated to gospel – actions for enforcement of rights in relation to immovable property lie (subject to some exceptions) in the Court within whose jurisdiction the property is situated.

But, where is intellectual property situated? This question started troubling the Courts early in the 20^th century, and cases such as Potter v Broken Hill Pty Co Ltd [1905] VLR 612 appeared to extend the Mocambique rule to actions for infringement of patents. Potter was a case where the question of title was involved; however, in Hesperides Hotels Ltd v Aegean Turkish Holidays Ltd [1979] AC 508, the Mocambique rule was applied in where no question of title to the property was involved.

Lord Wilberforce’s judgment in Hesperides effectively stated that it was for Parliament to change the law. This, Parliament did promptly: Section 30(1) of the Civil Jurisdiction and Judgments Act 1982 confirmed the jurisdiction of English Courts to entertain suits in relation to property outside England, “unless the proceedings are principally concerned with a question of the title to, or the right to possession of, that property.”

How far these Hesperides developments applied to intellectual property remained controversial, however, for Section 30(1) expressly dealt only with immovable property. By the early 1990s, the cases seemed to suggest that it was not possible to bring an action in England for enforcement of a foreign copyright.

For instance, Dicey & Morris stated in their 12^th edition, “Nor can the holder of a French patent, trade mark or copyright sue in England for its infringement in France. Since the French patent, trade mark or copyright is territorial in its operation… the act complained of would not be a tort if committed in England…”

This was confirmed in Tyburn Productions Ltd v Conan Doyle [1991] Ch 75, where it was held that it was not possible to sue in England for infringement of United States copyright. Now, it can be seen that the basis of the statement in Dicey & Morris (12^th edition) is that “the act complained of would not be a tort in England…”

This implies that in such cases, the proper law is the law of England, and not the law of the place of infringement. This was changed by the Private International Law (Miscellaneous Provisions) Act, 1995. In principle, the law of the place of infringement would be the applicable law. Despite this, in Coin Controls Ltd v Suzo International (UK) Ltd [1999] Ch 33, Laddie J. held that “the court had no jurisdiction to try claims for infringement of German and Spanish patents…”

One reason for this view is that a patent involves the grant of a right dependant on the grant of authority by a State. In such a case, a foreign Court examining the validity of the patent (as opposed to merely determining issues of infringement) would amount to an examination of the sovereign acts of a foreign state.

This would, perhaps, be seen as militating against the comity of nations, a principle of some importance in private international law.

Given this background, the next post will examine the decision of the Supreme Court in Lucasfilm. 

Guest Post: Legitimate Rights of a Copyright (and trade mark) Owner

We bring to you a pithy guest post on Section 62 of the Copyright Act from Sneha Jain, an associate from a leading NCR-based law firm. In this post, it is submitted that Section 62 allows even a non-copyright owner to institute a proceeding for infringement under the Act so long he has an actionable interest. Without further ado, below is Sneha’s take on the issue.

Legitimate Rights of a Copyright (and trade mark) Owner

Why is an IP owner’s cause always a politically incorrect one? Why is any interpretation of the law which protects the legitimate interest of IP owners projected in poor light? Is it probably because we are yet to come out of our socialist mind-set or is it because we think making money is an evil thing?

One of our primary duties as people who encourage public discourse in a niche area such as IP law is to present  honest views, regardless of their political correctness so long as they are supported by legislative intent as reflected in the statute.

My statements above may appear harsh to many but the reason for my harshness is the unending and legislatively unsubstantiated debate on the interpretation of Sec. 62 of the Copyright Act, 1957 (and the identical Sec. 134 of the Trade Marks Act, 1999).

Until now, the raging issue regarding Section 62 was whether the place where the plaintiff “carries on business” should also be the place where the “cause of action” has arisen in order for him to successfully claim jurisdiction under this section. In other words, whether the element of cause of action under the Code of Civil Procedure, 1908 (CPC) should be read into S.62 to avoid it being “misused” by “Money Powers” allegedly resulting in forum shopping?

Thankfully, this controversy has been put to rest by the Supreme Court’s decision in Exphar SA & Anr. v. Eupharma Lab. Ltd. & Anr (2004) where the court categorically held that “S.62 prescribes an additional ground for attracting the jurisdiction of a court over and above the ‘normal’ grounds as laid down in S.20 of the CPC.” 


While the Delhi High Court (Archie Comic Publications Inc. v. Purple Creation) continues to interpret this section without considering the Apex Court's ruling, the Madras High Court (Wipro Ltd. & Anr. v. Oushadha Chandrika Ayurvedic) has put to rest the issue following the Supreme Court’s unequivocal pronouncement of the law of the land.

But now, a new and totally unnecessary controversy seems to have riddled this section – who can institute a suit for copyright infringement under Sec. 62? Some believe that since it is the owner of copyright (which includes the exclusive licensee) who is entitled to remedies as per Sec.55 of the Copyright Act, it is the owner of copyright/exclusive licensee alone who is entitled to institute a suit under Sec. 62. 

According to this school of thought, since the owner of copyright is a foreign entity which has no Indian base, it has no place to “carry on business”, and therefore cannot invoke Section 62.  

Sec. 62 has been held to be a self-contained code so far as the jurisdiction in relation to matters arising under the Copyright Act is concerned (Ritiki Limited v. Pramod Kumar). Consequently, the question of who can claim the benefit of Sec. 62 can be answered by reference to the provision itself. For ease of reference:

62. Jurisdiction of court over matters arising under this Chapter. –

(1) Every suit or other civil proceeding arising under this Chapter in respect of the infringement of copyright in any work or the infringement of any other right conferred by this Act shall be instituted in the district court having jurisdiction. 

(2) For the purpose of sub-section (1), a "district court having jurisdiction" shall, notwithstanding anything contained in the Code of Civil Procedure, 1908, or any other law for the time being in force, include a district court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or other proceeding or, where there are more than one such persons, any of them actually and voluntarily resides or carries on business or personally works for gain.

A clear, open-eyed, sensible reading of Sec. 62 tells us that it does not refer to the owner of copyright AT ALL! The phrase used is “the person instituting the suit” as opposed to “the owner of copyright”. This implies that Sec. 62 does not restrict the right to institute legal proceedings for copyright infringement to the owner of copyright alone. The “person instituting the suit” may be an agent so authorised by the owner of copyright to institute infringement proceedings.

This interpretation finds support in the case of Phonographic Performance Limited v. Lizard Lounge & Ors.(Delhi HC, 2008) where the rights of a Copyright Society to institute a suit in its own name, for infringement of copyright of its members, was questioned before the Division Bench of the Delhi High Court. 

The Single Judge had concluded that the provisions of Sec. 55 of the Copyright Act confers the right for seeking a remedy against infringement only by the owner of copyright, the expression “owner of copyright” having been defined in Section 54 to include an exclusive licensee. Thus, since a Copyright Society is not an exclusive licensee, it was held not to have a right to institute legal proceedings.

Reversing this decision, the Division Bench stated –

“if we were to accept the reasoning of the learned single Judge, it would imply that the principles of agency as contained under the Indian Contract Act, 1872 have to be given a go-bye. The Copyright Society is an agent appointed under the agreement by the owner of the Copyright and specific powers have been conferred on the agent to institute legal proceedings. The said Act does not contain any provision prohibiting the institution of legal proceedings in derogation to the general law of agency. The author being the first owner of Copyright under Section 17 of the said Act can certainly appoint an agent to institute legal proceedings.”

Moreover, S.62 gives absolutely no importance to the geographical location of the owner of copyright while determining jurisdiction.  For the purposes of jurisdiction under Sec. 62, it is the geographical location of “the person instituting the suit or other proceeding” which matters. 

Consequently, even if the owner of copyright is a foreign entity and has no base in India, its geographical location is irrelevant and it is the Indian subsidiary’s place of business (i.e. the place of business of the person instituting the suit) that is essential to determine jurisdiction. 

The Supreme Court in Exphar has clarified this in beautifully articulated words as follows:

“The appellant No. 2 (who had a manufacturing contract with appellant No. 1, the owner of copyright) is certainly ‘a person instituting the suit’. The Division Bench went beyond the express words of the statute and negatived the jurisdiction of the Court because it found that the appellant No. 2 had not claimed ownership of the copyright of the trade mark, infringement of which was claimed in the suit. The appellant No. 2 may not be entitled to the relief claimed in the suit but that is no reason for holding that it was not a person who had instituted the suit within the meaning of Section 62(2) of the Act.” (emphasis added)

Thus, it is clear that the Supreme Court has laid to rest, both the controversies surrounding Sec. 62 – (a) Sec. 62 Copyright Act cannot be circumscribed by reference to Sec. 20 CPC, and (b) jurisdiction is to be determined not by reference to the place of business of the owner of copyright, but by reference to the place of business of the “person instituting the suit”.

I thank Sai Deepak for sharing his views on the issue with me.

Guest Post: A Constitutional Approach to Intellectual Property

I am delighted to bring this pithy thought-provoking post by a very close friend of mine and a brilliant mind, Divya Subramanian. Divya is currently an LL.M. candidate at Franklin Pierce Law Center, Concord. 

In this post, Divya ventures to fit in Intellectual property Rights within the proprietarial framework of the Indian Constitution. She cautions that her thoughts are testy and do not have the benefit of rigorous substantiation through case law.

That said, I personally feel she has pointed to some wonderful areas of potential research. Hopefully, we will build on her thoughts in the near future. Without much ado, here’s Divya’s post.

A Constitutional Approach to Intellectual Property- Divya Subramanian

A resident on my street, one  day walked up to my home at 10 p.m. (knowing that would be the only sane time to catch me, and of course distracting me from my favourite show on TV!) with some   papers in her hand.  She showed herself in and asked me if I could help her out.

I took the paper in hand, and alas it was a Sale deed for a house down south (in India). I politely asked her, as to how I could help her.

She said.. ”You deal in property matters right??” And I quipped…“Aunty…Intellectual Property!!!” The conversation didn’t last long after, but did leave a few lingering thoughts...

I wouldn’t be surprised if many of you have had similar encounters. It is true, a large section of Indians are mistaken on this count, and I believe that they are not to be blamed for it. The Indian Intellectual Property space has gained prominence only over the last 5-10 years, which is not long enough for a country like ours where downloading a song is perfectly normal for most.

My short stint at a place with starkly different cultural differences (including IP related culture), namely the US, makes me wonder, is the Indian Constitutional framework the one to be looked at in order to bring  a sea-change? The constitution for sure recognizes the “right to property” but does it act as the Kelsenian grundnorm, pertinently with respect to Intellectual Property??? I believe only tangentially, and not expressly.

A part of me, strongly sees the need to recognize Intellectual Property as property under the Indian Constitution. One of the driving forces behind such a belief is the way I read Section 48 of the Patents Act, 1970. 

To me, the provision seems to be imposing an absolute duty (as envisioned by Austin) upon the Rest of the World to not interfere with the right of the patentee/licensee.  Section 48, is sure subject to the exceptions under Section 47 as also the experimental use exception. The nature of this seeming ‘absolute duty’, to me, is reminiscent of the rationale behind Directive Principles of State Policy enshrined in our constitution. 

Another attributing factor is the treatment of Right to Property over time by the Indian Constitution. Its de-recognition as a fundamental right under Art.19 and inclusion in Art 300A clearly highlights the shift in thought- from a fundamental right, to a right which could have a constitutional remedy in case of a State interference, not interference by private parties. 

The fact that the government via legislations, has reserved certain exceptions/leeway (compulsory licensing in patents for instance) to itself, is reflective of its recognition of Intellectual Property as a form of pure property. However, on the flip side, would express Constitutional inclusion of intellectual property lead to a battery of writ petitions being filed, is a question I fail to answer. 

When this comes across, I often feel the way our Constitution is worded is fine, allowing room for liberal interpretation where necessitated.  But on the other hand, to my eyes Constitutional recognition of IP would also lead to greater respect for IP rights and right holders.

While the Constitution seems to have been the driving force behind many legislative amendments, perhaps including the coparcenary movement, my stronger leaning is to the view that recognition would only aid the IP awareness and enforcement movement in our country. 

A country where this has worked rather well, is the United States, where copyrights and patents are expressly recognized under the constitution. The reason for this comparison also arises from the common historical influences, however, treatment and exposure to the same, albeit incomparable.

While Art.1 Section 8 Clause 8 of the US constitution need not be the absolute guiding light, the fact that it indeed proves effective in IP enforcement cannot be ignored. The jurisprudence behind the theories of induced and contributory infringement, fair use in the US, the balance between free speech and trademark rights, all relate back to its Constitution, thus laying a very strong basis for the extent of IP protection in the country.  

Again, on the flip side, it also seems extremely utilitarian in nature, explaining for the lack of adequate “moral rights” proposition in its copyright regime.

I do not intend to state that US practices are the very filmy “pathar ki lakeer” (Kelsenian absolute), and I hold a different viewpoint on many counts that it has adopted. However, on this point, I do feel there is something we could draw cue from...

  

Guest Post: Patenting ‘Life forms’ under the Patents Act, 1970- Patent Unconstitutionality? - II

This is a continuation from Aditya Arun Kutty's guest post.
Use of the term ‘Variety’

The use of the word ‘variety’ in s. 3(j) is further unreasonable and leads to discrimination between those who are breeders of plant variety and those breeders of animal variety. On one hand, breeders of plant variety are entitled to protection under ‘The Protection of Plant Varieties and Farmers’ Rights Act 2001 (PVRFR), and on the other, breeders of animal variety not only succumb to Section 3(j), they are left in the lurch since there is no separate legislation to protect their interests.

Furthermore, what constitutes ‘variety’ is also unclear as the dictionary meaning fails to identify what can be patented by virtue of its general nature and the Plant Varieties Act defines ‘variety’ only in the context of plant variety.

Also, the phrase ‘animal varieties’ was interpreted narrowly by the European Patent Office to limit the phrase to a variety and as not extending to animals per se. However 3(j) will not permit such an interpretation as it includes ‘animals in whole or any part thereof’.

Lack of a Clear definition

The EPO defines essentially biological process as consisting of entirely natural phenomena such as crossing or selection. Hence, EPO allows patenting of genetically modified plants or animals since genetic modification ensures that what is patented is not purely a natural phenomenon. 

Li Westerlund in his book on Biotech Patents,[i] states aspects of a biological process, which in practice, could lead to problems while deciphering its patentability quotient:

(i)                  Purely biological or essentially biological steps or a mixture of those steps, in a process.

(ii)                Purely biological/essentially biological steps but put together in a manner that levels the process at the higher technical standard.

(iii)               Biological/essentially biological steps plus a technical step in a process.[ii]

These steps clearly colour the fact that in the absence of a specific test to delineate patent-worthy inventions from the rest, the patent office to date remains ill-equipped to decide.

Article 14 strikes at arbitrariness because an action that is arbitrary must necessarily involve negation of equality. In this regard by not defining ‘seed’, ‘species’, ‘essentially biological process’ s. 3(j) leaves a tremendous scope for arbitrariness.

The only other legislative definition of a ‘seed’ would be that under the Plant Varieties Act, i.e. ‘a type of living embryo or propagule capable of regeneration and giving rise to a plant which is true to such type’. (s. 2(x))

In a case where seed is made by human interventions, (falling within this definition)its patentability would depend on the absolute discretion of the patent office.

Integration of words like patents, animals, essentially biologically process, without qualifying them with certain meaning, could well-nigh lead to denial of a patent (which inadvertently goes against the balancing objective of TRIPS under article 7) and this when provisions in foreign regimes such as the UK Patent Act specially accommodate for biotechnological inventions.

The situation in India as far as micro-organism patenting took a turn for the positive post the Dimminaco judgment of the Calcutta High Court (Process for preparation of alive vaccine for Bursitis). Subsequently, under the 2002 amendment to the Patents Act, only a micro-organism per se was unpatentable, qualifying the transgenic as patentable subject matter.

 Judicial Decisions/ Directives to seek Inspiration from

In the U.S. Animal Legal Defense Fund v. Quigg, the court held that an organism, “given a new form, quality, properties or combination not present in the original article existing in nature in accordance with the existing law”, could be patented.

Moreover, in the Harvard Oncomouse case, the first patent on a “non-naturally occurring non-human multicellular living organism”, patent was granted to a genetically engineered mouse.

In Ex Parte Allen, the patent examiner’s rejection of claims for a genetically engineered life-form was overruled. The board held that an oyster genetically engineered to be edible year round, constituted patentable subject matter. It was also opined that any multi-cellular organism may be patented by the inventor provided it:

A. it is created for the first time,

B. it is not a naturally occurring ,

C. is not a human being,

D. it is an item of manufacture or composition of matter, and

E. it meets all of the other conditions of patentability.

The EPC directive on legal protection of biological inventions 98/44/EC directly addresses patenting of life-forms. Under the directive, plants or animals may be patentable, if the technical feasibility of the invention is not technically confined to a single plant or animal variety. (This altered the EPC’s prior wording which explicitly excluded plant and animal varieties from patentability)

Article 6 of the Directive states that the human body, at the various stages of its formation (including the embryo and sequences or partial sequences of genes), is not patentable.

That said, it goes on to envisage that in case of an element of a human body, which has been removed through a technical process, can be patented even if the structure of the element is identical to that of a natural element.

In conclusion, I believe that the legislature needs to take a definitive stance prior to any litigation that may arise. Although common law will always factor equity into its analysis of legal issues, a statutory reference would serve to clarify the intention of the legislature. It would also give Courts the flexibility, precision and independence from subjective bias, to adjudicate an area of law in which the subject-matter is said to be ‘unforeseeable’.

Until and unless the law clarifies these terms, as was held in Sheo Nandan Parwan v State of Bihar- ‘the law will always frown on uncanalised and unfettered discretion conferred on any instrumentality of state.’

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[i] Biotech Patents: Equivalency And Exclusions Under European And U. S. Patent Law, Kluwer Law International (August 2002)

[ii] Ibid.