Feruary

IPR SPOTLIGHT

February 2009

IPR SPOTLIG

HT



INSIDE THIS ISSUE:





FICCI EVENTS





FICCI Update

on IP Issues









Editorial Board

Sheetal Chopra

(Senior Assistant Director & Team Lead)

sheetal.chopra@ficci.com



Sheena Piplani

sheena@ficci.com



Shruti Kaushik

shruti@ficci.com

Ph.- (Dir.) 23766930

IPR February 2009



SPOTLIGHT





INDEX

Page no.



1 FICCI Events. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1-6

- Effective use of the Customs IP Recordation System



- Consultative Working Group Milestone- Roundup



- Workshop on Prosecuting and Litigating Patents in India and Europe FICCI



- FICCI-DIPP-WIPO Conference



- FICCI facilitates filing of patent/trade mark applications by domestic innovators



- Judge's Round Table on IPR Adjudication







2. FICCI's Update on Intellectual Property Issues . . . . . . . . . . . . . 6-11

- Traditional Knowledge- The need for a separate code



- Enforcement – 'The fountain of justice'



- Battling Indian Mind Set & Intellectual Property1



- Role of Academia in Intellectual Property



- Piracy- A Termite on the Film Sector



- US Orphan Works Bill



- UNCTAD comes to the rescue of our banarasi handloom industry



- A breather for the weavers of our Kashmiri Pashmina shawls



- The NIIPM Initiative



- Scope of Intellectual Property Rights

IPR

SPOTLIGHT February 2009

FICCI EVENTS

World Kitchen Ink., Revelon, Loreal,

Effective use of the also puts innovation, international trade,

Oakley Inc., Bright Electricals Ltd., Adidas,

investment, tech-transfer, tax revenues,

Customs IP Recordation public health, further research and sound Sony etc.

economic growth at stake.

System As a short interview with the industry

The worldwide market for counterfeits and revealed some of the reasons why industry is

Intellectual Property (IP) refers to creations not making much use of this system. These

piracy stands at approximately $700 billion

of the human mind. It provides the inventor have been listed below:

and has grown over 10,000 percent in the

or creator with a limited exclusive right that

past two decades. Approximately $48 billion

serves as an important incentive to invent, a. No Awareness

are lost only because of software piracy. The

create and to commercialize. It also The most frequently cited reason by the

revenue and employment losses in India due

encourages the generation of new Industry of not having recorded their IP with

to counterfeiting and piracy have also

knowledge and creative works, which the Customs is that they are not aware of such a

assumed gigantic proportions and are

public can enjoy for eternity. An inventor system. This is the reason that FICCI in

affecting consumers and stakeholders

often makes his knowledge public in lieu of association with Indian Customs organized

the protection granted to him by the across industries. Moreover, the counterfeit

this programme so that Industry is made

government. In this way, IP creates a balance and pirated goods are also a major hazard to aware of the procedures which are to be

between the needs of the inventor and the consumer safety. followed while recording their IP. The

society, thereby promoting growth and programme was also organized with an aim

development. For any company today, IP - In view of the above, the notification by

to facilitate stakeholders with the correct

patents, copyrights, trademarks, trade Indian Customs Authorities of the

interpretation of various provisions of

secrets, industrial designs, employee know- Intellectual Property Rights (Imported

Customs Act.

how, and geographical indications - may be Goods) Enforcement Rules, 2007 is a

more valuable than any of its tangible welcome step that will be extremely helpful b. Passive Approach

physical assets. in securing borders and ports of India and

The Industry also mentioned that they

checking the importation of counterfeited

While it is important to protect Intellectual intentionally follow the laissez faire

Property, it is equally important to enforce and pirated goods in India. This notification approach i.e. the passive approach. They

the same. Without effective enforcement of empowers Indian Customs to stop the entry have not recorded their IP with customs

IP, it would be impossible to think about new of counterfeit and pirated goods into India. because so far they have not faced any overt

products and technologies entering the attack on their brand. Since their balance

However, as with other laws, the effective sheet does not encompass statistics on the

market, as imitators would copy them easily

without investing considerable resources. implementation of these rules is of great depth of losses that the company has met due

Furthermore, infringement of IP and the importance. to the menace of counterfeiting therefore

resultant prevalence of counterfeit and While the system of IPR recordation has the they are not active therefore they follow

pirated goods also affect employment and potential to effectively stop the entry of passive approach.

poses considerable risks for consumers. It infringing IP goods at the ports, not many c. To keep the consumer unaware

companies have used

this system. There are The industry also mentioned that they have

only 134 products till not recorded their IP because they are scared

date which have been that if due to their aggressive movements if

recorded by very few consumers become aware that there are

companies e.g. Nokia, many counterfeits available for their brands

Hindustan Uniliver then it will have direct bearing on their sales

Limited, Samsung, i.e. consumers would then be reluctant to

Mercedez Benz, purchase even their genuine branded

Xerox, Kuriamal products.

Gopichand, Beecham d. Cost implication on IP owners

Gropu PLC, G M

Industry also revealed that as per the current

Modulars, Reebock,

Glaxo, Sanofi Aventis, procedures of the IP recordation the IP







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SPOTLIGHT February 2009



owner has to bear the cost of destruction to newly established recordation system. patent application.

detain IP goods which at times become a Officials from Indian and U.S. Customs and 4. The records of granted patents (old) have

very expensive affair. This is the reason that Border Protection as well as representatives been made available online. The work of

they are not very active with the IP from industry were actively involved. Indian digitizing entire patent records is also in

recordation. and U.S. border enforcement officials process. The online access of digitized

exchanged best practices regarding the use records will be made available by

e. No dire consequences

of the recordation system in India and the January 2009. DIPP has informed that the

The other important reason quoted by the United States, and representatives from entire records including patents/patent

Industry for not registering their IP is that if industry had a chance to share their applications/response filed by the

today they are successful in stopping any experiences with using the recordation applicants etc. is expected to be made

infringing IP consignment then the infringer system in both India and the United States. available by January 2009.

is again seen back in the market place. This

5. FICCI has submitted a proposal to DIPP

essentially happens because as per the Consultative Working

current procedures of IP recordation there to incentivize users for E-filing of patent

are no dire consequences on the infringer i.e. Group Milestone - applications. This proposal will be soon

no harsh/exemplary punishment is levied on implemented.

Roundup

the infringer as a result of which he is not 6. The working group recommended for the

deterred to enter into infringing act again. As a result of Consultative Working Group creation of a mechanism which could

Deliberations on patents, designs and Trade provide assistance to the users who wish

f. Low worth of infringing IP goods Marks System in India, we have been able to to learn about the working of patent

Industry revealed that currently the worth of bring greater transparency in the working of office and the procedural issues. You

infringing IP goods seeking entry in India is Patent Office. Working Group Deliberations would be happy to note that Patent Office

not huge and does not substantially hit the have also led to streamlining of procedures has, as a result, recently launched an

balance sheet of the company. Further related to prosecution of Patents in India. interactive web based service under

keeping in view the huge cost that IP owner Here is the list of Milestones achieved and which any person who has query related

has to bear to destruct those low worth the press release made: to patent and Trade marks can chat with

infringing IP goods the industry is not lured 1. The Mumbai Patent Office has patent office.

to record their IP with customs. established a separate wing which is 7. E-filing of patent and trade Mark

The above cited reasons by Industry clearly solely responsible for data analysis. The applications made more user friendly by

revealed that there is a great need for Wing will be responsible for creating increasing number of payment gateways

interaction between industry and Customs statistical data on "records on technical and certifying authorities for digital

so that there is adequate exchange of fields by year of filings, maximum no. of signatures. This has led to substantial

dialogues. patents granted to a company in each increase in number of E-filings.

The FICCI-National Initiative Against sector, top 20 companies filing patents,

Piracy and Counterfeiting (NIAPC) and the total no. of patents granted in each year, Workshop on

U.S. Embassy in New Delhi organized a one resident filings, non-resident filings,

pending applications by office, patents in

"Prosecuting and

day seminar entitled "Effective use of the

Customs IP Recordation System" in three force by country etc. Litigating Patents in

cities Chennai, Bangalore and Kolkatta on 2. Patent Office has made the abstracts of India and Europe"

January 10, 12 and 14, 2009 respectively patent applications, published after 18

with an aim to provide an interactive months, online. This could eliminate the The concept of global economy is changing

at a very high rate. The focus of all types of

platform enabling industry and border Herculean and time consuming task of

businesses has become international. Such

enforcement officials from India and the searching the desired information

paradigm shift in the global business is

United States to discuss issues relating to the through Patent Office Journals which are

resulting from some central forces, one of

effective use of IP recordation system. This published in PDF format. those that are most effective is Intellectual

program helped to build greater synergies 3. Patent Office has also made available the Property, especially Patents. Such a

between Customs officials and stakeholders decisions of Controller's online enabling scenario demands a great understanding of

and to promote a better understanding of the third party to check legal status of the international patent practices including







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SPOTLIGHT February 2009



prosecution and litigation for protecting substantiated on the issue during his continuously encourage, develop, sustain

one's business in today's competitive world. presentation. and foster innovative culture in the

Global stakeholders have realized this need developing countries. It is thus imperative

There were other issues regarding cost-

in the recent times. to create synergy between Government and

effectiveness of a European patent, where

Industry to build robust IP regime and to set

In view of the above, FICCI-IPR division in individual inventors allege that there is no

up an interactive platform to foster

association with Indian Patent Office (IPO) difference in the fee which they have to pay

multilateral cooperation for enhancing

and European Patent Office (EPO) as compared to big corporations. Most

competitiveness, promote innovation and to

organized a one day industry specific countries including India and US provide a

create awareness among the key

program on "PROSECUTING AND fee reduction if the applicant is an individual

stakeholders about the policy measures and

LITIGATING PATENTS IN EUROPE inventor because at times it becomes

legislative reforms taken by the Policy

AND INDIA" on the 24th of October, 2008 difficult for them to maintain a European

makers to address the needs of Industry.

at FICCI, New Delhi. This programme had patent due to separate registration and

been framed in a manner so as to bring translation payments for all European states. In this backdrop, FICCI in association with

together representatives from the industrial This seminar offered an interactive platform Department of Industrial Policy and

bodies and government under one roof to to discuss issues related to prosecuting Promotion (DIPP), Government of India

discuss matters that are beneficial to all patent applications before an EPO in the a n d Wo r l d I n t e l l e c t u a l P r o p e r t y

kinds of industries. most cost-effective manner. Organization (WIPO) organized a three day

conference on "Development and IP -

The purpose of this seminar was to make the

Building Synergies between Industry and

Indian Industry aware about prosecuting and

Policy Makers" in Goa on 1-3rd September

litigating patent applications in India and

2008 and two day Inter-regional forum on

Europe in a cost-effectively and also to learn

the "Role of Intellectual Property in the

about best practices adopted by each patent

Innovative Economy" in New Delhi on 26th

office. This program aimed at giving the

-27th November 2008.

participants an opportunity to interact on a

one to one basis with the representatives of The aim of these Conferences was to

both the Indian Patent Office and European assemble selected parties involved in the IP

Patent Office. system in different countries of Asia,

namely, policy makers and industry, to

In the recent past there have been many

gauge the impact of IP on select industries,

issues regarding the transparency of patent

and the manner in which companies in these

offices and their working procedures.

sectors have been making use of the

Through this programme we aimed at

enriching the participants with the latest FICCI-DIPP-WIPO different elements of IP to leverage their

competitiveness, promote trade and create

developments that have taken place at Indian Conference jobs.

Patent office with a view to make the system

more transparent and to address the concerns The global economy is increasingly During the conference, a project on

of the Industry today. FICCI plays an active becoming dependent on distribution and "Enhancing IP Competitiveness" was

role by working in coordination with the access to technologies. Developing launched by WIPO with an aim to gauge the

Indian patent office to devise various economies have realized the need for the impact of IP on different sectors in ASEAN

mechanisms so as to make the patenting enforcement of a stronger IP regime. member states and the manner in which

procedures more streamlined. Dr. Kardam Industry and Governments in these companies in these sectors had been making

countries have partnered to fine use of different elements of IP and leverage

tune their Intellectual Property their competitiveness, which is the need of

(IP) laws, regulations and the hour.

practices to balance IP rights

The project was launched on the 3rd of

with public welfare.

September in the presence of Mr. Nicholas

As the focus of R&D and Tandi Dammen, Deputy Secretary General,

Foreign Direct Investments ASEAN Secretariat. FICCI intends to

(FDI) moves towards the collaborate with WIPO in future also to

developing economies, there is launch similar projects in India with a view

an ever increasing need to to develop and leverage the competitiveness

of the Indian Industry.





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SPOTLIGHT February 2009









The three day conference was attended by India: Specific Reference to the FICCI facilitates filing of

delegates from about 18 countries across the Pharmaceutical Sector, The Use of

world including Japan, Singapore, Compulsory Licenses in the Pharmaceutical patent/trade mark

Cambodia, Vietnam, Laos, Bangladesh, Sector, The Use of IP in the Electronics and

Republic of Korea, Philippines, Thailand, Information Technology Sector Challenges

applications by domestic

Indonesia and Brunei among others. faced by the Film, Music & Software innovators

Industry in the Protection and

Over the past few decades, there has been an

Enforcement of IP Rights, The

unprecedented increase in innovation across

Use of IP in the Automotive

India. India is now being considered as one

Sector and WIPO - ASEAN

of the knowledge capitals of the world.

Strategic Partnership on

Increasing R&D budgets, incentivization of

Economic Issues: Launching

private commercial R&D, globalization of

of New Project on Enhancing

trade, the exponential growth of the

IP Competitiveness.

entertainment industry, all call for a robust

The three day conference was IP Regime.

attended by delegates from

The advent of rapidly increasing relevance

about 18 countries across the

of intellectual property in the present

world including USA, Laos,

There were detailed discussions on (I) the knowledge driven economic development

Malaysia, Japan, Singapore, Cambodia,

latest international trends and developments has led the Government to take several

Vietnam, Laos, Bangladesh, Republic of

in planning of a strategy for development of initiatives both in the legislative domain as

Korea, Philippines, Thailand, Indonesia and

intellectual property; (ii) the appropriate well as the administrative set-up in order to

Brunei among others. Leading organizations

policy approaches, strategic framework and create a modern and efficient IP

and corporate from both India and abroad

institutional mechanisms for utilizing infrastructure in the country. The

attended the conference.

intellectual property as a powerful tool for

an innovative economy; (iii) intellectual

property as a common language for

government and markets in the promotion of

competitiveness, innovation and creativity;

and (iv) intellectual property rights policies

to foster innovation and diffusion of

technology in emerging areas of the

economy

The learned speakers addressed various

issues such as Development and Intellectual

Property (IP): The New Global Imperatives,

The Economics of Intellectual Property, IP

Strategies to Enhance Competitiveness:

(Government & Industry Perspective),

TRIPS and Development of IP Laws in





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IPR

SPOTLIGHT February 2009



upgradation and modernization of the for businesses and the role of the US Patents participation to free society from the menace

administrative framework covering Patents, Office on the afore-stated in the Indian of piracy and counterfeiting. The initiative

Designs, Trade Marks and Geographical subcontinent. The speakers also deliberated aims to promote awareness of the dangers

Indications & supporting infrastructure was on IP protection for inventions and creative and consequences of piracy and to

the first step taken by Ministry to enable works based upon Genetic Resources, strengthen the capacities of the enforcement

officers to handle the increasing workload Traditional Knowledge and Folklore. The system in association with professional

and cope with emerging challenges. The speakers are eminent experts in the field of bodies, training institutions and concerned

Government has spent about Rs. 150 crore in IPR from government and industry. departments of the Government. He

the first phase to create modern integrated These seminars were highly appreciated by concluded by saying that well designed IP

Intellectual Property Offices with the participants for the awareness generated regime increases the national wealth and

augmented human resources in the four among the stakeholders to appropriately use benefits the consumers. Innovation

metropolitan cities. A budget of Rs. 320 the existing intellectual property provisions industries are key drivers of economic

crore has also been approved for the second for protection for their intellectual property growth and key providers of well-paid jobs

phase of modernization. rights and the role of the enforcement thus attributing to the achievement of broad

However, it is observed that the IP owners agencies. development objective. However, receiving

and users are not well versed with the benefits of IPRs is not automatic and

provisions of IP laws, as a result the Judge's Round Table on requires favorable legal, regulatory and

domestic inventors do not file applications policy framework including a national IP

for protecting their inventions and hence are

IPR Adjudication strategy.

unable to reap the commercial benefits. This Federation of Indian Chambers of The issues discussed were Basis and

is supported by a report of E&Y which states Commerce & Industry (FICCI) in International Character of Intellectual

that, "in China in year 2007, 62.4% patent association with Tamil Nadu State Judicial Property Rights, Intellectual Property -

applications were filed by domestic Academy conducted a Round Table on "IPR Scope of Rights and Enforcement,

applicants while in India only 20% of patent Adjudication" for Judges of the High Court Intellectual Property Rights in the

applications were filed by domestic and Judicial Officers of District Courts of Entertainment Industry, Intellectual

applicants. Tamil Nadu. This Round Table was a sequel Property Rights in the Digital World,

to the earlier Round Tables on IPR Intellectual Property Rights in Computer

Adjudication organized by

FICCI in Bhopal with the

Supreme Court Judges and

Kolkata and Bangalore

which were attended by

Judges from the High Court

and district courts and

covered the basic principles

of IPR law, its national and

international relevance and

effective enforcement in

accordance with India's

commitment in Trade

Thus, FICCI along with US Embassy took Related Aspects of IPRs (TRIPs) under Software, Overview of the India Patent Act -

the initiative to organize a series of one day World Trade Organization (WTO). Recent Developments and the Practical

IPR awareness programme in Jaipur (11th Guidelines for Adjudication of Cases

Tamil Nadu State Council Chairman,

September '08), Ahemadabad (18th Relating to Intellectual Property Rights.

FICCI, Mr Rafeeque Ahmed in his welcome

September '08) and Coimbatore (24th remarks stated that the importance of IP is Hon'ble Mr. Justice Asok Kumar Ganguly,

September'08). The programmes aimed at increasing day by day and the governments Chief Justice Madras High Court gave the

introducing various intellectual property worldwide are adopting new strategies to Presidential address. The Keynote address

rights, their economic importance in the combat IPR violations. He informed that was delivered by Hon'ble Justice Mr. P.

present times, the importance of these rights FICCI has set up a National Initiative against Sathasivam, Judge Supreme Court of India.

as tools of development, issues relating to Piracy and Counterfeiting (FICCI-NIAPC) The inaugural address was delivered by

enforcement of these rights and its relevance to generate industry support and public Hon'ble Mr. Justice Altamas Kabir, Judge







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IPR

SPOTLIGHT February 2009



Supreme Court of India. Hon'ble Mr. Thiru Associates, New Delhi;

G M Akbar Ali, Director, State Judicial Mr. Pinaki Ghosh, Head -

Academy gave the vote of thanks. IP Cell, Infosys

The speakers are eminent experts in the field Technologies Ltd.; Mr.

of IPR from government and industry like Nitin Masilamani, Senior

Dr. T. Ramakrishna, Professor, Intellectual Associate, Amarchand

Property Rights and Centre Coordinator, Mangaldas; Mr. Keshav

CIPRA, National Law School of India D h a k a d , C o - C h a i r,

University, Bangalore; Mr. Jagdish Sagar, Business Software

IAS (Retd.) and Copyright Expert; Mr. Alliance India Committee;

Madhukar Sinha, OSD (IPR), Centre for M r. D e v R o b i n s o n ,

WTO Studies, IIFT New Delhi; Hon'ble Mr. P a r t n e r, A m a r c h a n d

Justice A.K. Sikri, Judge High Court of Mangaldas; Mr. Rajeev

Delhi; Mr. G. Masilamani, Advocate Ranjan, IAS and IPR

General, High Court, Madras, Mr Xerxes Expert; Hon'ble The two-day program includes interactive

Ranina, Partner, Neolegal Associates; Mr. Mr. Justice S Jagadeesan, Judge (Retd.), sessions on patent, trademark and copyright

Rodney D Ryder, Partner, Fox Mandal & Madras High Court and Mr. Rajendran, law adjudication and a session on practical

Co; Mr. Saikrishna Rajagopal, Saikrishna & Sr. Advocate, Madras High Court. guidelines for adjudication of IPR cases.









FICCI'S UPDATE ON

INTELLECTUAL PROPERTY ISSUES

often said that the laws in India refrain from to which only a select few have access and

Traditional Knowledge- defining traditional knowledge as a benefit from. Rather the need of the hour is

The need for a separate deliberate and wise omission owing to the to promote access to traditional knowledge

vastness of the concept. resources in such a manner as to ensure

code

There has been a mixed response to the need equitable distribution of benefit arising

Traditional Knowledge, although has from use of such resources.

for a separate legislation from the

nowhere been defined by our legislators, as

stakeholders. In the Absence of protection, The Government is considering the need for

the name suggests; is the knowledge which

the society witnessed theft of 'Traditional appropriate legal mechanisms to protect

is not rendered traditional due to antiquity

Knowledge'. It has been argued 'Traditional Knowledge'. The Department

but due to the fact that it has been developed,

sustained and passed on within a traditional unanimously, on one hand, that the existing of Industrial Policy & Promotion had in the

provisions are inadequate. Attempts to past consulted various ministries on the

community, and is passed between

exploit traditional knowledge for industrial proposed bill. As already mentioned above,

generations, sometimes through specific

or commercial benefits may lead to the views put forth were varied. It was

customary systems of knowledge

prejudicial misappropriation of the same expressed that a separate legislation on the

transmission. Hence, it is the relationship of from its rightful holders. The reasons subject is necessary to expressly recognize

the knowledge with the community that forwarded for protection of the traditional and protect community Intellectual

makes it traditional. However, different knowledge can be classified as ethical, Property rights, knowledge, practices and

phrases have been coined for the expression economic, scientific, moral and so. Hence, it innovations of indigenous people and

of the same concept, so while there may be becomes pertinent to develop ways and communities. It was thus proposed to

variations between expressions of folklore, means of protecting and nurturing provide legal protection to these collective

traditional cultural expressions and traditional knowledge. On the other hand, a rights, ensuring equitable negotiations,

indigenous knowledge, at the end of the day fraction of the stakeholders are of the view preventing violation of human rights and

they are all fathomed within the scope of the that it would serve no purpose to treat penalizing the violators. Furthermore,

generic phrase 'traditional knowledge'. It is traditional knowledge in an exclusive realm

there should be separate legislations for



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IPR

SPOTLIGHT February 2009



protection of not only 'Traditional trademarks, copyrights etc) shall be able to conserved (biological resource here could

Knowledge' but also 'Expressions of provide protection to traditional knowledge, be a traditionally known biological resource

but this protection is generally felt as or some new species of plant or animal).

Folkfore' as they deal with completely Further, for protecting any Intellectual

insufficient or inadequate for the traditional

different issues. and local communities that are usually huge Property arising out of the use of such

Another view expressed was that the various in number in developing countries like ours. biological resource (traditional or new

existing provisions of intellectual property species), the researcher has to enter into an

As it is evident from the contentions put agreement with the said authority, which

laws need to be carefully analyzed and

forth above that there are strong varied ensures equitable benefit sharing upon

researched prior to the enactment of the

views, the Department of Industrial Policy commercialization of Intellectual Property.

proposed bill. It was also expressed that & Promotion has taken an initiative to hold a

misappropriation of traditional knowledge Since the scope of Traditional Knowledge to

further enhanced discussion on the same. A

information can be considerably minimized be protected under the new legislation

o n e - d a y R o u n d - Ta b l e o n t h e

would also include the protection of

by the proper use of the TKDL database, aforementioned proposal was held on the

biological diversity, which is already the

which would also help to save time and 3rd of February, 2009. The majority were in subject matter for protection under the

money on traditional procedures. It was also the favour of a new legislation ensuring existing acts( already explained above),

proposed that amendments to existing benefit sharing to the owners of such therefore there seems to be an overlap

legislations in order to make them traditional knowledge. between the two Acts.

exhaustive would help tackle the FICCI had proposed that the scope of the To do away with the problem of two

aforementioned difficulties faced the by new legislation would be such that legislations that give relief/protection and

holders. It was also contended that an protection would be accorded to the subject benefit to a common class of people, below

effective implementation of the Convention

matter which is created, conserved and mentioned can be adopted:

on Biological Diversity, in particular its transmitted from generation to generation We retain the Bio Diversity Act as it is

Article 8(j), at a national level is significant by indigenous community in different applicable in the present context (i.e.

in ensuring that traditional knowledge will

forms; know-how and practices acquired by traditionally known biological resource

receive adequate protection.

a long term usage and experience (including along with the new species) and from the

However, those in favour of a separate code scope of new legislation on 'Traditional

folk treatment, folk medicine, folk

feared that in a developing country like

technology of tool making, ornament Knowledge', we exclude the subject matter

India, globalization posed a threat to the

already covered under Bio Diversity Act.

appropriation of elements of the collective making, pottery etc), verbal expressions

knowledge of societies into proprietary (folk tales, poetry, riddles), musical Incase the above option is feasible, the

knowledge for the commercial profit of a expressions, expressions by way of human “ Traditional Knowledge Protection

few. Recent cases of biopiracy have proved actions (folk dance, folk gesture), Authority” would be established under the

to be an eye opener for the government as expressions incorporated in material objects new Act wherein the nature of its functions

well as the stakeholders on the need for a (paintings, weaving, carpet making, would be similar to the functions of

framework to provide international sculptures, designs, handicrafts, textiles, “ National Biological Diversity Authority”

protection of Traditional Knowledge costumes, patterns, logos etc) and folk (to permit/regulate the use of the traditional

belonging to the Indian Subcontinent. practices (beliefs, customs, rituals, folk

subject matter of research, maintain

Therefore, an urgent need for a sui generis games, animal sports). Broadly, it would

cover protection to Traditional Knowledge, database of traditional knowledge owners,

legislation to protect these fragile

knowledge systems through national biological resources, Traditional Cultural ensure benefit sharing etc. Further, the said

policies along with international Expression/expressions of folklore and authority would maintain records and

understanding linked with intellectual associated traditional knowledge. However, annual statement of accounts which would

property, while providing for their the existing Biological Diversity Act be audited by Auditor General of India on a

development and proper use for the benefit currently ensures conservation of biological continuous basis.

of its holders. Such a national legislation diversity and equitable benefit sharing to the FICCI would be happy to know opinion of

would enable us to negotiate at international community which traditionally knows how its members on this subject matter which is

forum, once enacted. the biological resource has to be practiced. extremely important for accurate policy

To protect the traditional knowledge decision. You may send your response at the

As per the Bio Diversity Act, the researcher

belonging to our land at an international earliest at sheetal.chopra@ficci.com at the

has to seek permission of the National

level, it was felt that, to a limited extent, the Biological Diversity Authority which thus earliest.

conventional IP system (patents, GIs ensures that the biological diversity is



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IPR

SPOTLIGHT February 2009



collecting statistics on counterfeiting and Customs and Central Excise has a module

Enforcement - 'The piracy. These statistics help us evaluate from on intellectual property rights in its

fountain of justice' time to time, the efficacy of the existing induction training programme for newly

provisions and measures undertaken for recruited officers.

Legislative history of Intellectual Property

enforcement. The analysis drawn enables us Furthermore, the ministry of tribal affairs

Laws includes various statues right from the

to further make our systems and procedures had prepared a draft on national tribal policy

1957 up till 2002 and various other bills

infallible. In furtherance of this aim, the to regulate protection, socio-economic,

proposed from time to time to widen the

Department of Industrial Policy and political empowerment, development of

scope of recognition and protection of

Promotion has taken the initiative to set-up infrastructure, increased livelihood

intellectual property in the Indian sub-

an inter-ministerial conference to coordinate opportunities, improved governance and

continent. The existing codes regulate

intellectual property enforcement. This administration, preservation and protection

copyrights, patents, trademarks, and

c o m m i t t e e s h a l l e n s u r e e ff e c t i v e of cultural rights, traditional rights and

geographical indication of goods, industrial

enforcement through effective legislations, traditional knowledge in the intellectual

designs, semiconductor integrated circuits

efficient enforcement, sensitization of the property regime. The subjects needed to be

layout-designs, plant varieties and farmer's

masses and data collection for evaluation. preserved were the rich tribal culture,

rights (protection), and lastly, the biological

These also include compulsory training for heritage, arts, crafts, dance and music

diversity. It is worth mentioning that these

officials of the government as well as private through documentation and dissemination,

subjects fall not under any one but various

sector including training programmes for festivals. Lastly, cells were created for

ministries, operating under a common web

customs and police academies also, creators artisans and artists for promotion and

'intellectual Property'.

of intellectual property, academicians, awareness about the Indian culture and

The aggrieved party has an option under the stakeholders, industry and the public at heritage.

Indian Legal system to proceed under the large. Seminars and workshops undertaken

civil or the criminal codes for remedy. Apart to accomplish the tasks mentioned above. It can therefore be concluded that our

from the existing statutory enforcement The underlining thought is to generate and government, the stakeholders including the

mechanisms providing for remedies against increase awareness as far as possible on the industry, the owners of such rights have been

offenders, there are other legal and recognition of rights, protection and most cooperating for effective enforcement of

administrative provisions for enforcement importantly the enforcement of these rights intellectual property rights in our Indian

under the Indian Penal Code, The Consumer without which these rights would become subcontinent.

Protection Act, The Bureau of Indian meaningless.

Standards Act, authority granted to the Battling Indian Mind Set

The current Copyright Enforcement

police to take appropriate action under

various circumstances like search of

Advisory Council was set up on 22nd of & Intellectual Property

February, 2005, which shall be reconstituted

premises of the offenders etc., state aided It seems that Indian industries and

after a period of 3 years. It handles a very

and state run 'Intellectual Property Cells', innovators are still not in a mood of stirring

significant task of reviewing the progress of

provisions under the Customs Act and under towards Intellectual Property (IP) and its

the enforcement of copyright in India and

the initiative taken up by the postal knowledge. The IP industries in India are

suggest measures to improve the same.

department of India. still majorly dependent on the foreign

Separate cells have been set up at various

inventors and law firms. We seem to be still

The role of our judiciary is undoubtedly the police headquarters for the conducting of

happy with generic mode of patented

most significant for justice. They have raids and seizure post complaints and

articles, licensing mode of technical

explained that when the offence has criminal judicial orders. The HRD ministry also

advancement and coping mode of Research

propensity there must be punitive damages, provides financial assistance to various

& Development (R&D).

so that the tendency to again violate the laws organization and institutions to promote

and infringe the rights of the owners with a awareness by organizing conferences and It is not surprising that our industries and

view to make money is curbed. The courts seminars to sensitize the unaware masses. innovators have only 20% role in the

have without any hesitation passed ex-parte Further, few copyright committees have also domestic patent filings in India. Further, out

orders for seizure of goods in appropriate been set up to assist the public through their of 20%, 12% is contributed by just 10

cases, enabling a fair trail at the various Anti Piracy Cells in collaboration with the domestic companies and Institutions in

stages. police and enforcement authorities. The aim India. Out of these patent applications most

is to guard our rights with a proactive of the applications have been failed to grant

Other organizations which are indirectly

copyright administration. due to lack of novelty and poor drafting. The

contributing are the National Records

conversion rate of patent into successful

Bureau and the Indian Music Industry, by Moreover, the National Academy for

market product is still very low in India in





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IPR

SPOTLIGHT February 2009



comparison to other countries. We are still in FICCI are jointly conducting IPR within their organization and effectively

a mode of struggle for existence in World's Sensitization Programmes to spread the using their IP tools, and simultaneously

Patent Map. message to public at large. making them self sustainable body.

There is no doubt that India has large The focus of the campaign is to promote India is indeed learning these facts and

potential and millions of intellect brains. utilization of IP as a powerful tool for an implementing into the academia to make

However, India is lagging behind because of innovative economy and build capacities of them self sustainable body. It is now the time

extra conscious Indian Mind Set. We are still the inventors, researchers, industry and for Government to reap the crop by

not very comfortable with the idea to invest other stakeholders to effectively market promoting and creating awareness among

our intellect in IP field. We do not believe their innovative products. the academia. Few of them are already on

very strongly in IP assets and Such programmes do help people and the path of becoming self sustainable body.

simultaneously there is an unseen fear while industry understand the importance of But, the majority of Scientists, Research

investing to create IP assets. Although, we Intellectual property in Nations' Scholars, Professors and Students in India

do want to have awareness in the field of IP development and economic sustenance. are unaware about the role of IP in economic

but the short term profit and business goal However, there is always expected development and growth of their own or

restrict us to do that. This may be one of the symbiotic support from the industries and nation. Scientific Research & Development

reasons that the terms IP, Patent, Trademark stakeholders in such moves. The execution in Indian academia is not marketed as it is in

& Copyright are still unfamiliar in most of of very idea of IP Protection has to be taken other countries. Innovation and Incubation

the Industries, Institutions, Universities and by industries and innovators aggressively centre within the University, Institution and

Public-Private funded R&D. for the interest of their own as well as organization is still awaiting. A strong IP

There is yet another issue which prevails in economic growth and development of implemented university and medical

the IP regime in India. Some inventors are nation. research in India is needed to add more fuel

very keen to file patent applications but their in the economic and technology growth. In

mindsets and prejudices about IP Experts do Role of Academia in addition various instruments are needed to

not allow them to take expert opinion on ensure that there are ways to transfer

patentability and drafting issues. The mutual

Intellectual Property technology from the universities to the

participation of patent agent and inventor is commercial sector. A highly educated and

Government funded R&D, Institutes and

almost nil in domestic patent prosecution skilled workforce is obviously critical as is a

Universities have a major impact on the

due to the lack of awareness and strong financial and legal-patent

development and promotion of Intellectual

unavailability of adequate funds. Inventors community.

Property. The term business has never before

have mind set that expert opinion will cost been associated with the academia. But, the Government of India is accelerating this

more than profit gain. They have implementation of IP in the academia has pace through various changes in the

misconception that drafting and filing of a changed their entire face over the globe as legislation and encouraging Public-Private

patent application is a simple process and the facilitator of economic growth and Partnership in the development and

similar to the publication in research development of nation. Now, academia is promotion of IP enabled academia. In the

journals or as an article. Prior art search is not limited to only the centre of learning & pattern of Bayh-Dole Act, Government of

seldom done with the domestic patent excellence but extended to hub of innovation India is going to implement a Public Funded

application due to the Indian Mind Set and and business promotion. R&D Bill which enables the academia to

socio-economic condition. Incomplete develop as a self sustainable body. The Act

Over the globe the major Universities and

disclosure and poor drafting is still prevalent will create a uniform patent policy among

Institutions had already implemented IP as a

in domestic patent applications. These are the Public-Private funded research, enabling

business and strategic tools in their

some of the issues which act together in small businesses and non-profit

curriculum. They have created their own

decision making of an innovator, especially organizations, including universities and

innovation and incubator centre to

independent ones. institutions to retain title to inventions made

encourage in-house scientists, research

However, there is always a ray of hope in the under such funded research programs. This

scholars, professors and students, and are

form of Government, Industry Associations act aims to share the market revenue among

managing and maintaining their own IP

and Not for Profit Organizations who come the inventors and associated skilled

portfolio. Oxford, Cambridge, Harvard,

forward for the hand holding of concerned workforce and encouraging universities to

NIH and many had established an excellent

ones. One such step is National IPR participate in technology transfer activities.

centre of innovation and business

Campaign launched by Government of India promotion. They had learned the Now, its time for academia to learn the

whereby Department of Industrial Policy communication between business, legal, effective use of IP tools and the proper way

and Promotion, Indian Patent Office and technical, and marketing departments to implement Innovation and Incubator





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IPR

SPOTLIGHT February 2009



centre within the organization. This should piracy measures along with a manual will be Many have expressed their view on the

be also involving the participation and circulated containing guidelines for their above. It is said that the Senate bill requires

awareness among the educated and skill assistance. In the same lines, FICCI has little changes but the House bill "resembles

workforce. The Policy makers of the submitted draft Optical Disc law to Ministry more of a well-decorated Christmas tree" in

academia would have to make policy of Information and Broadcasting which favor of copyright owners as it needs users to

regarding patent filing and technology aims to stop piracy in the form of optical show and file their search attempts in a

transfer to the commercial sector. At this discs. "notice of use archive" (NUA) housed at the

juncture, Government needs the full support Copyright Office. It is unclear whether the

from the innovating and implementing US Orphan Works Bill depository would be "dark", in that its

group and become self sustainable within contents would only be revealed when a user

An "orphan work," is one that is without an

the minimum time limits. was sued or open, raising privacy and

active copyright holder. Artists die,

"copyright troll" concerns. Users who are

publishers go out of business, some people

Piracy- A Termite on the never registered their work in the first place.

not successful to summit their search results

are regarded as infringers. It was felt that a

Film Sector Even if some entity still exists who values

registration fee should be given by users for

the copyright on the object in question, it can

Intellectual property rights engulf almost their searches in order to fund the new

be impossible to locate this person. The US

everything that is manufactured or anything administrative procedures. The requirement

Congress took up the stab to solve this

that has a commercial value touching almost will be "burdensome and potentially

problem.

every sector in an economy directly or extremely costly" to libraries engaged in

indirectly. The offenders, keeping a pace On 24th April, the Shawn Bentley Orphan mass digitization projects where millions of

with the universal trends aim at profit Works Act, 2008 and the Orphan Works Act, titles are involved. The proposed legislation

maximization at the cost of human 2008 were introduced. These were does not affect fair and reasonable use. It is

creativity. The creators are robbed of their introduced to bring about a balance in believed that the measures are the "first pro-

own creations and innovations, causing existing copyright laws by helping in finding user change to the Copyright Law in almost

them to loose the confidence and faith of of owners and encouraging new and creative two decades and that the bills are a "crucial

their customers. use of unexploited copyrighted works. step" toward meaningful consideration of

When a fruitless search or a diligent search the requirements of users and copyright

FICCI has contributed by setting up the

to find the true owner is conducted or when a owners. The legislation is a "good first step

FICCI-NAIPC (National Initiative against

copyright owner is unidentifiabe or is as we consider how innovation is impacted

Piracy and Counterfeiting) a few years ago

unlocatable, a searcher may then use a by our copyright system's deficiency of

in order to create awareness, take up

copyrighted work without the fear of being registration requirements coupled with strict

enforcement issues, judicial concerns and

levied with hefty copyright infringement liability and statutory damages.

most importantly the policy making and

damages. Independent and documentary

legislative issues. The objective was to Shawn Bentley Orphan Works Act of 2008

film makers, libraries, archives, and

create an environment where innovations was reported by the committee on the 15th of

museums all have collections of orphaned

are rewarded as well as protected. It aimed at May, 2008 and thereafter passed by the

works that they would like to transform into

promoting awareness towards the Senate on the 26th of September, 2008.

new works or display, but because they

consequences of piracy and the need to Similarly, the Orphan Works Act, 2008 was

cannot find the owner to seek permission or

strengthen the enforcement mechanisms. In introduced on the same date and on the 15th

license the work, the threat of copyright

order to attain the above, professional of May 2008, it was placed on Senate

infringement freezes them in their tracks.

bodies, training institutions and Legislative Calendar under General Orders

The two most significant features of these

governmental agencies gave their after the orders for it being reported post

proposed bills are that they require users

contributions. To further equip our learned amendments in the nature of a substitute.

conduct a meticulous and a diligent search

members of the judiciary, various round Thereafter, on the 26th of September, 2008,

for copyright owners before using work

table conferences were held for the judges the Senate passed it with an amendment by

claimed to be orphaned, and provides for

from various states. These conferences, Unanimous Consent. On the following day it

payment of reasonable compensation incase

organized by FICCI, were discussion based. was received in the house and referred to the

they surface, unless the use is for scholarly,

House Committee on the Judiciary.

The ministry of broadcasting has taken charitable, religious or educational

various steps to fight piracy in the film purposes. The US Copyright Office must Once they are voted in the House and Signed

sector. Firstly, a scheme has been proposed therefore, develop search guidelines and by the President within two years of

to formulate appropriate training modules certify private-sector registry services for introduction, bills become law.

for police officers to train them for anti- visual art.







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IPR

SPOTLIGHT February 2009





UNCTAD comes to the

rescue of our banarasi

handloom industry

To promote Baranasi silk Sarees, the United

N a t i o n C o n f e r e n c e o f Tr a d e a n d

Development (UNCTAD) had announced to

support the geographical indication

registration of the traditional Indian

women's drape. UNCTAD appreciated the

labor put in by the artisans to weave the

sarees and further announced that special

measures would be taken to safeguard the market, causing a rift between the traditional The enrolment is on a first come first serve

production of these sarees. Handloom Pashmina workers and mill owners. This basis. Since it is a short term programme, it

industry at Varanasi has been suffering for notification came as a great relief to the is conducted on a regular basis several times

many years because of machine made traditional workers. in an year (www.ipindia.nic.in)

products. The machine made sarees are

usually produced at a much faster rate and The NIIPM Initiative Scope of Intellectual

sold at comparatively lower prices. This

results in losses to weavers as they are forced The National Institute of Intellectual Property Rights

to close down their shops. UNCTAD plans Property Management (NIIPM) based at

Nagpur, Maharshtra is a Central Patent (Inventions) is an exclusive right

to introduce a systematic information granted by the Government to the applicant

network in order to make people well-aware Government Organization under the

Ministry of Commerce & Industry which is for his disclosed invention of product or

of the product protected under geographical process which should be new, non-obvious,

indication. engaged in conducting Training / Awareness

programs on Intellectual Property Rights useful and patentable as per the patentability

(IPR) i.e. Patents, Designs, Trademarks & criteria laid down in the national law. Patent

Geographical Indications. Such IPRs are offers technical solution to a technical

considered as a barometer of R&D problem.

activities, encourages technology transfer, Designs protecting any shape,

national/foreign direct investments & helps configuration, pattern, color, the creations of

in technological/industrial development. It the appearance of industrial products.

was observed that many inventors were Trade Mark is a visual symbol in the form

loosing the chance of obtaining Patents for of word, name, logo, label etc, as applied to

their inventions by commercially using or

A breather for the publishing their invention in newspapers or

a vendible article, with a view to indicate

origin of manufacture or service or vendor in

weavers of our Kashmiri scientific and technical journals and such that respect and enable customers to

inventions are thus remain unprotected and distinguish the product of one manufacturer

Pashmina shawls loose their exclusive rights. Therefore, from the goods of the other.

The central government has finally declared NIIPM has decided to conduct "Training on

IPR" to create awareness of IPRs. Since the Geographical Indication identifies

Kashmir Pashmina as a Geographical agricultural, natural or manufactured goods,

Indication (GI), thus providing Kashmiri programme was introduced with a view to

sensitize the masses, the eligibility criteria is originating from a definite territory. GI is an

artisans exclusive rights over the brand. indication or appellation of the origin of a

Products including shawls, scarves, stoles not restrictive. The candidates can be

professionals from Industries, Research & particular product.

and other stuff made from Pashmina goat are

very popular in India and worldwide. The Development, Scientists, IPR related Copyright is protection that covers

notification of Central Government was persons from IPR cell, Knowledge Process published and unpublished literary,

published on September 12, 2008. It outsourcing (KPO) / Legal Process scientific and artistic work. Copyright

followed an agreement between Kashmir outsourcing (LPO), Attorneys, Legal relates to the exclusive right to do or

Handmade Pashmina Promotion Trust Professionals, Patent / TMR / Designs authorize to do certain acts in relation to

(KHPPT), Crafts Development Institute Agents, Advisors, consultants, Professors, original Literary, dramatic or musical work,

(CDI), Tahafuz, an association of Pashmina Lecturers, Students, Researcher scholars, artistic creations (paintings, photographs,

workers, and Wildlife Trust of India (WTI). Doctors, Engineers, Pharma related Persons work of architecture), Cinematographic

or any interested person. It is a 2-5 days films, Sound Recording, Software

There were a huge number of low-cost training programme with very nominal fee. programme etc.

machine-made Pashmina products in the





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