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SPOTLIGHT Dec. 2007 INSIDE THIS ISSUE : IPR FICCI EVENTS GUEST COLUMN IPR NEWS HIGHLIGHTS WIPO DEVELOPMENTS LEGAL UPDATES Editorial Board Akash Taneja (Executive Director) Ph.- (Dir.) 32404277 akash.taneja@ficci.com IPR PROTECTION Patents Copyright Sheetal Chopra (Senior Assistant Director) Ph.- (Dir.) 23766930 sheetal.chopra@ficci.com Geographical Indications Trade Marks MESSAGE FROM SECRETARY GENERAL Dear Members, I am very happy to inform that FICCI has created a platform for updating our members on latest developments in Intellectual Property Rights (IPR) area through this bi-monthly publication-“ IPR Spotlight”. “IPR Spotlight” has been conceptualized as a concise newsletter that will cover news on variety of IPR topics including patents, trade marks, copyrights, geographical indications, designs, etc. It contains a section related to legal updates on Intellectual Property (IP) matters in India and abroad, including patent oppositions, review of various IP laws, their implications and interpretation, recent IP case studies, etc with an aim to keep the members abreast with the latest developments in the area of IP. I would also like to take this opportunity to inform you that the Assemblies of the member states of the World Intellectual Property Organization (WIPO) have granted National Non-Governmental Organization Observer status to FICCI. This would give FICCI the mandate to raise the issues of concern to Indian trade and industry at the highest decision making levels in WIPO. FICCI would now be represented as an observer in the various meetings convened by WIPO. We would be happy to receive your suggestions on policy issues, which have a bearing on your business. I hope you will find this newsletter as a very useful value added service and I would look forward to your suggestions for improving this service. Best regards, (Amit Mitra) FICCI EVENTS National Seminar on Combating Piracy and Counterfeiting FICCI in its drive against “Piracy and Counterfeit” celebrated Intellectual Consumer Protection” were held after the inaugural and were chaired by Mr. Vijay Lazarus, President, IMI, Mr. N N Prasad, Joint Secretary, DIPP and Mr. Octavio Espinosa, WIPO, respectively. The speakers were Mr. Pravin Anand, Anand and Anand; Mr. Aditya Shastri, COO, UFO Moviez; Mr. Shaswata Dhar, Unilever; Retired IPS officer, Mr. J N Saksena, IMI; Mr. S D Mishra, EOW; Ms. Anice Joseph, from NACEN; Mr Amarjit Singh from Amarjit & Associates and Mr Savio D' Souza, IMI. Approximately 100 participants from industry and media attended the seminar. Property Week, which started on April 20, 2007. The weeklong celebration included Poster campaigns; e-mail blasts; banners on major websites; TV Spot and radio jingles in major regional languages; advertisement in newspapers; training program for the customs officers in various states etc. The program ended with a National Seminar – “Combating Piracy and Counterfeiting” on April 26, 2007 which was organized by FICCI in association with Department of Industrial Policy and Promotion (DIPP), World Intellectual Property Organization (WIPO) and other Industry Associations. Mrs. Shabana Azmi, Chairperson Core Group On Piracy constituted by I&B Ministry shared her observations during the inaugural session at the Seminar. According to her “Government must consider giving tax benefits for the creation of digital cinema infrastructure, which will be very successful in curbing theft and piracy of the cinema.” Dr. Ajay Dua, Secretary DIPP who inaugurated the Seminar said that, “Government is in the process of compiling a national database on IPR, which includes IPR violations, prosecution and penalties. A centralized database will help to devise a national strategy and pursue targeted actions to combat piracy and counterfeiting”. Three sessions namely “Initiatives by Industry to combat Piracy and Counterfeits”, “Enforcement Action to Protect Intellectual Property” and “IP and other parts of the world and would also examine the existing and proposed Indian legislation in related areas so that the draft legislation is synergistic with existing/proposed laws. The first meeting was held on 19th October 2007 and the group members are to submit the report to Government within three months from the said date. Seminars on Intellectual Property for Prosperity With a view to create awareness on intellectual property rights and its economic importance for trade and industry, FICCI’s and Institute Of Intellectual Property Studies (IIPD) along with the US embassy conducted series of seminar in Ludhiana (3rd Oct. 2007), Bhopal (9th Oct. 2007) and Raipur (11th Oct. 2007). The objective of the seminar was to raise IPR awareness in major industrial towns and cities in India on “how Intellectual Property impacts our daily lives;” increase understanding of “how protecting IP rights helps promote creativity and innovation and encourages respect for IP rights of others.” The said Seminar addressed topics like “Introduction to intellectual property rights and their economic importance in today's business”. It also addressed specifically the “IP protection issues for businesses in Ludhiana” and IP protection for inventions and creative works based upon Genetic Resources, Traditional Knowledge and Folklore. Mr. Akash Taneja, Executive Director, FICCI-IIPD addressed the importance of Intellectual Property Rights Protection and its commercialization. He also gave inputs on how the IP protection can be an important asset to the businesses in Ludhiana, Bhopal and Raipur, respectively. Ms. Sheetal Chopra, Senior Assistant Director, FICCI-IIPD spoke on “the prosecution of patent applications in India”, “provisions for opposition and revocation of patent/patent applications”, “provisions for compulsory licensing”, searching Indian patent applications/patents”, “the procedure for registration of designs” etc. Consultative Working Group on Patent, Trade mark and Design System in India Government of India has taken several legislative initiatives on IP front including revamping of administrative set up, computerization of operations and enhancing Human Resource capabilities of IP offices. This is being done so as to gear up to meet the demands of trade and industry. FICCI's Institute of Intellectual Property Department (IIPD) has constituted a Consultative Group comprising senior officers of DIPP; Controller General of Patents, Designs and Trade marks; Industry representatives and legal experts to discuss and address various administrative, legal and procedural issues concerning the intellectual property system in India. The first meeting of the consultative working group was held on 8th November 2007. The informal meetings with the other stakeholders were also conducted so as to get larger consensus on the final recommendations. Working Group Innovation Law on FICCI has formed a working group, on the directions of Mr. Kapil Sibal Minister of Science and Technology, for drafting a model “Innovation Law” in India. The group shall examine the legislations dealing with innovation in Bannumath, Chairman of the Karnataka Judicial Academy was also present. Mr. P Murari, Advisor to President, FICCI, delivered the welcome address. The main purpose of the roundtable was to engage the members of the judiciary, in a meaningful discussion on the various issues that arise while a d j ud i c a t i ng i nt e l l e c t ua l property and information technology cases and its impact on the nation and the industry. Over 50 judges from State High Court and Judicial Officers from the District Courts participated in the Round Table. Panel Speakers included eminent lawyers, senior government officials, as well as industry stakeholders from the Music and Film Sectors. Some of the major topics covered in the Round Table include “Basic and International Character of Intellectual Property Rights”, “Scope of Intellectual Property Rights and Enforcement”, “Intellectual Property Rights in the Entertainment Industry”, “Intellectual Property Rights in Computer Software”, “Intellectual Property on the Internet”, “Threats to Online Safety and Security”. This program is one among the series of programmes initiated by FICCI, which started with a program at the National Judicial Academy in Bhopal in July 2004, a Judges' Round Table Conference on IPR Adjudication at Kolkata in July 2005. Hon'ble Justice R V Raveendran, while giving the inaugural address, emphasized that a thorough knowledge of the reason behind legislations and the historical and social conditions due to which legislations came into being are important while delivering judgments. Hon'ble Justice Cyriac Joseph in his presidential address said that more such workshops would be held in Karnataka so that all judicial officers could get the benefit of these. The Chief Justice mentioned that quality of Justice has to be maintained while deciding cases. He also emphasized that only quality concerns are not enough. Knowledge of the subject and the specialized nature of IPR cases are important while dealing with cases involving intellectual property. Judges Round Table Advanced Module on IPR Adjudication As announced by Mr. Justice Cyriac Joseph, Chief Justice of Karnataka High Court in the previous Judges Roundtable on Intellectual Property Rights Adjudication in June, 2007, an “Advanced Module on IPR Adjudication” was held for the judges from District Courts across Karnataka. Mr. G V Subramanyam, Vice President SETLabs (R&D Division), Infosys Technologies Ltd. delivered the Keynote address where he said that research and innovation are now seen as the key factors determining the market value of a product or service. He said that the increase in global trade coupled with technological revolution has led to an increase in IP crimes. The worldwide losses due to piracy and counterfeiting are estimated to be to the tune of US$ 650 billion. He said that IP has a very short self-live and any delay in resolving IP matters could be devastating to the IP holder. Mr. Akash Taneja, Executive Director, FICCI gave the welcome remarks. He said that importance of IP is increasing day by day and the governments worldwide are adopting new strategies to combat IPR violations. He informed that FICCI's National Initiative Against Piracy and Counterfeiting (FICCI-NIAPC) has been set up to generate industry support and public participation to free society from the menace of piracy and counterfeiting. The initiative aims to promote awareness of the dangers and consequences of piracy and to strengthen the capacities of the enforcement system in association with professional bodies, training institutions and concerned departments of the Government. Justice Bannurmath, Chairman, Karnataka Judicial Academy gave the Vote of Thanks. Justice Cyriac Joseph, in the inaugural address said that the 15 judges attending the Round Table have been selected on their willingness and aptitude for specializing in IPR adjudication. The Chief Justice mentioned that such trainings should be provided to judges for speedy disposal of IPR cases while ensuring that the quality of justice is maintained. The The panel of speakers for series of seminar were Mr. Dominic Keating, First Secretary, US Embassy; Mr. Akash Taneja, Executive Director-FICCI; Mr. N.R. Meena, Mr. Sanjay Kesharwani and Dr. Ruchi Tiwari, Asst. Controllers of Patents & Designs, IPO; Dr. Neelima Jairath, Incharge Intellectual Property Right, Punjab State Council for Science and Technology, Chandigarh, Dr. R. G. Saini, Chairman IPR Advisory Cell PAU and Ms. Shalizeh Nadjmi, Office of Health and consumer Goods. Customs Workshops on Border Measures-Protection of IPRs FICCI-National Initiative against Piracy and Counterfeiting (FICCI-NIAPC), as a part of the Intellectual Property Week Celebration (April 20-26, 2007), organized a series of Workshops in Calcutta, Chennai and Mumbai on protection of IPRs in partnership with “NACEN” and “The Embassy of US in India”. The purpose of this workshop was to address the concerns regarding IP crimes and the initiatives taken to combat them. Judges Roundtable on Intellectual Property Rights Adjudication The Judges Round Table on Intellectual Property Rights Adjudication was organized by the Karnataka Judicial Academy in association with FICCINIAPC and Christ College of Law on June 9-10, 2007, Bangalore at Christ College Campus. Hon'ble Justice R V Raveendran, Judge, Supreme Court of India inaugurated the Roundtable. The event was presided over by the Hon'ble Justice Cyriac Joseph, Chief Justice, High Court of Karnataka. Hon'ble Justice S R Chief Justice announced that these judges would preside over designated benches with exclusive jurisdiction over cases relating to Intellectual Property and Information Technology. Mr. B.A. Muchandi, Director, Karnataka Judicial Academy said that the judicial academy is taking pro-active measures to include new and emerging areas of law such as intellectual property laws and information technology laws in training programmes for judicial officers. The three-day program was attended by eminent academicians, legal experts and practitioners in the faculty. The program included interactive sessions on patent, trademark and copyright law adjudication and concluded with sessions on practical guidelines for adjudication of cases relating to intellectual property rights. GUEST COLUMN administrated by World Intellectual Property Organization (WIPO) and Agreement on the Trade Related Aspects of Intellectual Property (TRIPS) administrated by the World Trade Organization (WTO). It is being realized globally that the future prosperity of nations will depend more upon their intellectual property and less upon the natural resources and physical assets. The fact and figures exhibit that the emerging copyright industries associated with informative and entertainment value are having a tremendous impact on the growth of national economies. Copyright protection for the authors provides an incentive for the dissemination of ideas, though the ideas themselves are not protected according to TRIPS and the municipal laws. The idea-expression dichotomy has been an inevitable troubleshooter for authors getting 'inspiration' or 'guidance' from the works of their senior counterparts. The litigation is growing in numbers and the interesting questions emerging are: Was Sahara Media Entertainment Limited in making Karisma- The Miracle of Destiny only inspired by Bradford's Woman of Substance or indulged in plagiarism? Can the advertisers of TIDE use the characters of the serial Kyonki Saas Bhi Kabhi Bahu Thi ? Are the remix songs in any way affecting the rights of original c o mp o s e r s o f mus i c ? C a n t he computer assemblers sell the PCs with copies of software as a marketing strategy? Were Maulana Azad and Humayun Kabir the co-authors of the book India Wins Freedom published by Orient Longman? Can you pick up a real story from the newspaper and make a film or a drama based on it? Is there any difference between playing a music cassette for students in a hostel, inmates at a hotel, customers at a music shop or for workers in a multistoreyed office building? Can one write 'Guide' for students using the text verbatim of the text book? If Vigyan Bhawan is to be renovated, can the mural once bought from Amarnath Sehgal be dismantled, removed and kept in a store house without affecting any rights of the sculptor? Does forwarding of an e-mail of a friend to others violate the copyright of the friend? The copyright term for a story writer is his life time plus sixty years, whereas for the producer of the film it is sixty years from the date of exhibition. What is the rationale behind this discrimination? A lot has been debated and codified and yet there are plethora of questions that need to be answered. The debate goes on! Dr. Alka Chawla University of Delhi GENESIS AND EVOLUTION OF COPYRIGHT Johannes Guttenberg's invention of printing press in 1436 and the consequent inventions of audio-visual recorders, satellites, broadcasting, internet etc. has made duplication and communication of works globally possible virtually at a zero cost. The property of the authors in their original works, therefore had to be protected from unscrupulous duplication, copyists, pirates, counterfeiters and infringers. The protection originated in the form of copyright law but its tradition and norms differed in the common law and civil law countries. Harmonization of legal principles is now provided by an interlocking network formed by conventions and treaties IP NEWS HIGHLIGHTS Initiative by the Indian Government to Stop the Spread of Fake Drugs Currently, the state and central Governments have authority to issue licenses for the manufacturing of drugs. Health secretary Naresh Dayal said “Unfortunately, the control mechanism of state regulating bodies is not efficient and their inefficiency is one of the key factors why spurious drugs are flourishing in the country.” Now, the Government is planning to withdraw the power from the state and central government to issue the licenses. Secretary said that center has referred the draft bill to the standing committee to form a Central Drug Authority of India (CDAI), which will be finally responsible to issue licenses to the drug companies. He also said that the new body will be fully autonomous and will be modeled in lines with FDA in the US. Dayal said the “Drugs and Cosmetics Act will be amended in the near future to put a high penalty on spurious drug manufacturers and those involved in their marketing”. He also states that Philippines has signed an agreement with India as a result of which Philippines will import large number of drugs from India Mint on 1st Nov. 2007 reported that the DCGI will flagoff nationwide survey to map the extent of fake drug wherein the drug regulator will hire people who would pose as customers and will collect samples of drugs from chemist shops and will send the samples to respective drug makers to identify counterfeits. includes pharmaceuticals, food and beverages, business software, electronics, films and televisions etc. Such sector gateway provides useful information contributed by many different organizations and shall help in identifying and addressing Intellectual Property Rights issues. This shall bring about the greater commitments by local, national and international officials in the enforcement and protection of IPR. BASCAP provides pool of information on counterfeiting and piracy, which is otherwise not available easily. It also facilitates the exchange of information among industry players, government, policy makers and enforcement officials. The brand protection directory, informs interested parties of measures which business community can take to protect their brands through investigation or use of anti-counterfeiting technologies. conjunction with `Made in India' and `Served from India' schemes of the Export-Import Policy. As part of the policy, the National Institute of Design (NID) will be upgraded and efforts will be made to give it the `deemed to be university' status so that it can award degrees and not just diplomas, as is the case presently. E-filing of Patent and Trademark Applications in India Initiated The e-filing system has been launched by the Indian Union Minister of Commerce and Industry, Kamal Nath, in order to make the filing of patent and trade mark applications more smooth and user-friendly. By doing this Indian has joined USA, Japan, South Korea, China and the European Patent Office in offering online filing for trade mark and patent applications. Also, this initiative shall help in strengthening the Intellectual Property Rights in India. The E-filing system has been designed to remove impediments, which are encountered while filing the applications manually. The said system provides advantages such as saving time, money and efforts as well as the hassles involved in physical visiting and filing of applications at the offices. The system is very new and would be strengthened with the time so that “examination”, “correspondence”, “opposition”, “hearing”, “registration”, “renewal” and “assignment”, etc. could also be done electronically. Presently, only filing of the new patent applications can be done electronically while all other communications such as “request for examination”, “recordal of assignment” etc. have to be done physically. The digital signatures of the person filing the patent application are important to ensure the security and authenticity of the documents filed. This requirement is in accordance with the provisions of Indian Information Technology Act of 2000. The modules for managing e-filing facility and on-line processing would Public Funded R&D Projects (Protection of Intellectual Property) Act Proposed The Union ministry of science and Technology has circulated the draft of bill on IPRs which seeks to provide government funded universities, research institutions and inventors the power to patent innovations and gain 30% stake on commercialization of invention. If the proposed legislation is implemented then it will encourage industries to invest in public funded research and will thereby promote industry-university-government relationship. Also, experts opine that the proposed legislation shall help in reducing the barriers for collaboration and encourage entrepreneurship. The proposed legislation is expected to motivate the universities and research institutions to come up with commercially viable inventions. Initiative Against Counterfeiting and Piracy The International Chamber of Commerce (ICC) has introduced a new online portal on 26th September 2007: "BASCAP – Business Action To Stop Counterfeiting And Piracy”. This initiative has been taken to fight against counterfeiting and piracy. It connects the global business sectors, which New National Design Policy In order to ensure global positioning and branding of Indian designs, the India's Union Cabinet has approved the National Design Policy that seeks to make `Designed in India' a by-word for quality and utility. This will be in be developed by the Informatics Centre (NIC). National India gets Status of International Search Authority (ISA) and International Preliminary Examination Authority (IPEA) The Assemblies of the member states of the World Intellectual Property Organization (WIPO) concluded by appointing Indian Patent Office as ISA and IPEA. Delegates also applauded India in developing it’s system to International standards. As stated by Shri Kamal Nath, Union Minister of Commerce and Industry, the recognition as ISA and IPEA will enhance the prestige of the IPO and may also attract work from abroad. ensure that effective enforcement procedures are available. The TRIPS agreement also includes provisions requiring action by customs authorities against suspected counterfeit or pirated goods. The increase in global trade and technological revolution has also led to increase in IP crimes. Crimes relating to piracy and counterfeiting have increased manifold in global market as a result of which the government, business, society and consumers are loosing billions of dollars. The customs and police departments, therefore, have a crucial role in combating counterfeiting and piracy crimes. Customs department has come up with a unique system wherein the holders of trade mark, copyright, design and patent can register their rights with the department for the custom so as to identify and intercept counterfeits and pirated goods at the point of entry. The new system comes as a part of larger measure of “boarder procedure”. The World Customs Organization has taken several initiatives in this area. One of them is creation of WCO IPR Strategic Group, which has been developed as a joint venture with International Business Sponsors, which coordinates action against global counterfeiting from the customs perspective besides providing other related services. Several measures including access to information and intelligence, effective communication within customs as well as between customs and other agencies, non-bureaucratic low cost application procedures for encouraging businesses to lodge application and provide information and appropriate legislation including power to take ex-officio action are required to be initiated. Kingdom; Germany; France and Swiss Federal Councillor for Economic Affairs regarding several intellectual property issues. This MoU contains affirmations to “strengthen the respective offices,” “training Indian patent and trademark examiners,” “develop education material for the examiners”, “produce a manual on patent practice for use by Indian examiners and the public”, “developing human resources”, “cooperation in capacity building activities”, “issues relating to counterfeits and pirated products,” “cooperation in the area of protection of geographical indications and traditional knowledge,” “joint studies on Intellectual Property issues” etc. WIPO Grants “Observer Status” to National and International NGOs The WIPO Assembly consisting of 184 member states, which was concluded on October 3, 2007, has agreed to grant observer status to ten additional international non-governmental organizations (NGOs) and four additional national non-governmental organizations. WIPO grants observer status to organizations, which focuses on Intellectual Property matters falling within the competence of WIPO. Admission of NGOs as observes by WIPO grants the NGOs following privileges: 1. raise issues concerning trade and industry at the international forum, offer constructive and substantive contributions to the deliberations of the Assemblies of WIPO, right to attend, as an observer, the various meetings convened by WIPO, US Patent and Trademark Office Says “No” to Reissue Lipitor Patent The U.S. Patent and Trademark Office (USPTO) has rejected Pfizer's request to reissue the patent for its cholesterol drug Lipitor, which was held to be invalid by court of Appeals for Federal circuit and the decision was taken in favor of Ranbaxy, which wants to sell generic version of Lipitor. A second patent was upheld, preserving Pfizer's U.S. market exclusivity for Lipitor until March 2010. 2. New System to Protect IPR at the Borders Intellectual Property Rights (IPRs) are essentially simulators of creative activity in society that generate wealth and enhance welfare of people. Model legislation and effective administrative infrastructure for acquisition of IPRs are important steps towards IP protection. But the acquisition of IP rights is of little economic value if these rights cannot be enforced effectively. The agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) that is a part of WTO requires the members of WTO to 3. Indian Ministry of Commerce and Industry Signs MoU The Indian Ministry of Commerce and Industry has signed a bilateral memorandum of understanding (MoU) with representatives of USPTO; Ministry of Economy, Trade and Industry, Japan; European Patent office; United WIPO has granted observer status to following NGOs: - Federation of Indian Chamber of Commerce and Industry (FICCI); - Chamber of Commerce of the United States of America (CCUSA); - Chartered Institute of Patent Attorneys (CIPA); WIPO DEVELOPMENTS Link between Intellectual Property Rights and Life Science Innovation World Intellectual Property Organization is organizing series of symposia to explore relationship between Intellectual Property Rights and Life Sciences and clarify the intellectual property dimension in the life sciences. The protection of biotech inventions is very contentious issue as it raises distinct ethical questions. The symposium on “IP and bioethics” was held on 4th September 2007 and the symposium on “Current Issues In Intellectual Property and Public Health” was held on 19th September 2007. innovation and creativity in a balanced and effective manner”. WIPO members have agreed to establish a committee, which will monitor and assess the matters in coordination with WIPO bodies, so that effective implementation of the recommendations can take place. relating to dimension.” the international Oman becomes party to Budapest Treaty Oman (OM) deposited its instrument of accession on 16 July 2007, to the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure. The Budapest Treaty entered into force with respect to Oman on 16 October 2007. WIPO Establishes Committee for the Protection of Genetic Resources, Traditional Knowledge (TK), and Folklore or Traditional Cultural Expressions (TCEs) With a view to provide adequate protection to genetic resources, traditional knowledge (TK), and folklore or traditional cultural expressions (TCEs), WIPO General Assembly established ICG (intergovernmental committee) in October 2000. ICG has developed draft objectives and principles for the legal protection of TK and TCEs against misappropriation and misuse. Dr. Kamil Idris stated “The IGC has already provided useful guidance for community, national and regional consultations and legislative initiatives. Its working materials continue directly to help policymakers working towards stronger legal recognition and protection of TK and TCEs. Its work on genetic resources and patent disclosure issues helped define the terms of this crucial current debate. The challenge now is to capitalize on this work in the form of concrete, tangible outcomes at the international level. I hope that member states will build on these efforts and work for a successful conclusion Angola becomes New PCT Contracting State Angola (AO) deposited its instrument of accession on 27th September 2007. As of 1st October 2007 the total number of States party to the Treaty are 138. Consequently, any international application filed on or after 27th December 2007 will automatically include designation of Angola. Also, AO will be bound to Chapter II of PCT. WIPO Adopts Development Agenda In order to enhance development dimension of the World Intellectual Property Organization's activities the member states have adopted a Development Agenda wherein series of recommendations will be provided. Dr. Kamil Idris welcomed the decision, on Friday, September 28, 2007. The said recommendations shall be based on various activities which includes “Technical Assistance and Capacity Building; Norm-setting, Flexibilities, Public Policy and Public Knowledge; Technology Transfer, Information and Communication Technology (ICT) and Access to Knowledge; Assessments, Evaluation and Impact Studies; Institutional Matters including Mandate and Governance”. Dr. Idris stated “This milestone decision is an important and positive step towards ensuring that the international intellectual property system continues to serve the public good by encouraging and rewarding Series on Geographical Indications in WIPO Magazine WIPO has recently taken initiative to bring the concept of “Geographical Indications (GI)” into the limelight by a way of publishing the articles in the WIPO Magazine, which is available at http://www.wipo.int/wipo_magazine/en /2007/04/article_0003.html . This initiative has been taken due to the reader's requests for greater coverage of GI-related topics. First such article has been published in the July 2007 issue of WIPO Magazine, which provides details on the 2007 International Symposium on Geographical Indications in Beijing, and on China's strategic use of GIs to promote a range of specialty products. LEGAL UPDATES Publication and Withdrawal of the Patent Applications Filed in India: Section 11a and Rule 24a of Indian Patent Act In accordance with section 11A, no application for the patent shall ordinarily be open to the public before the expiry of 18 months from the date of priority or from the date of application, whichever is earlier. not be published under section 11A(3) 1. 2. Where secrecy directions have been imposed Patent application has been abandoned under section 9(1) i.e. when complete specification is not filed within 12 months in pursuance of an application accompanied by provisional specification. Request for early publication Rule 24A: Under Section 11A(2) and Rule 24A any interested party may request the controller for early publication of an application i.e. before an expiry of 18 months from the date of an application or priority whichever is earlier. Such a request shall be made on Form 9 along with a fee of Rs 10,000/"Provided that the period within which the controller shall publish the application in the journal shall ordinarily be one month from the date of expiry of said period, or one month from the date of request for publication under Rule 24A. Forest's Patent on Lexapro Held to be valid at US Federal Circuit Ivax had filed an ANDA (Abbreviated New Drug Application) seeking the marketing approval for the Escitalopram. The ANDA certified that the claims of the US reissue patent 34,712 (the '712 patent) are invalid and are not infringed. Cipla is the intended supplier of Escitalopram and contributed to the information for filing of the ANDA. Forest sued Ivax on 22nd September 2003 contending that Ivax's ANDA infringed the '712 patent. Ivax denied the allegation of infringement and counterclaimed for the invalidity of '712 patent stating that the claims are invalid for obviousness and anticipation. The '712 patent covers the substantially pure form of (+)-enantiomer of Citalopram (referred to as Escitalopram) and non-toxic acid addition salts. The claim 1 of '712 patent claims Escitalopram specifically and claim 11 recites the method of preparing the compound of claim 1 by cyclizing the intermediate diol. Withdrawal of an application before its publication under S.11A(3)(c): The application shall not be published if an application is withdrawn 3 months prior to the expiry of 18 months from the date of priority or application whichever is earlier. Such a request for withdrawal shall be made in writing along with a fee of Rs 4000/-. Cipla have failed to show that the claims are invalid as anticipated. It also pointed out that the prior art reference is not enabled thus the person having ordinary skill in the art shall not be able to make the compound by reading the prior art reference. The court noted that the prior art reference suggested isolation of a stereoisomer to create a more potent drug but the reference, however, did not enable the process of isolation. The court also found that the person having ordinary skill in the art, at the time of the invention, would be motivated to make the new compounds rather than take the difficult task of resolving the known racemate. Also, the District Court concluded that Ivax and Cipla have failed to prove by clear and convincing evidence that the claims of the said reissue patent are obvious. The court also found that the secondary considerations of commercial success, unexpected results, and copying by others supported the validity of the claims. Federal Circuit Opinion: Cipla and Ivax appealed the order of the District court entering judgment upholding the validity of US reissue patent 34,712 in favor of Forest Labs. Inc. and enjoining Cipla and Ivax from selling the generic version of Lexapro (Escitalopram). But the Federal circuit has upheld the validity of the said reissue patent. District Court's Decision: After the bench trial, the district court handed down the decision in favor Forest Labs. Inc. stating that Ivax and Other circumstances under which an application shall IPR PROTECTION - PATENTS Government Says No to Guidelines for Section 3d Section 3d of the Indian Patent Act states “mere discovery of new form of a known substance which does not result in the enhancement of the known efficacy of that substance is not patentable”. But term “efficacy” has not been defined in MPEP (Manual of Patent Examination Procedure), which can provide the standards for measuring efficacy. In nutshell, there is no measurable standard given against which the term “enhanced efficacy” could be easily proved. Because there are no guidelines provided thus it may encourage the emergence of many patent disputes. Novartis's case, which is much in hype these days, has emerged as a result of this. Many experts have felt the need for the formulation of guidelines so as to bring clarity while adjudicating Intellectual Property issues. But the Government is of different view. Economic Times reported on 18th Oct. 2007,that the Government has abandoned the efforts to formulate guidelines stating that such guidelines will only bring more confusion and will only complicate the matters. It stated that the law in itself is quite clear and there is no need for any further guidelines. An official said “We would like to leave it to the wisdom of examiners to interpret it and also the applicants can always seek legal remedy.” “Based on the Intellectual Property code of the Philippines and the TRIPS Agreement, countries have an obligation to grant patents on pharmaceutical products and processes, However, these same countries are not obliged to grant patents on new uses of existing substances. In fact, no provision in the TRIPS Agreement or in the Intellectual Property Code of the Philippines requires the grant of patents of for such. On the other hand, all the other participants in the hearing support the policy prescription of this particular amendment in line with the support and specific recommendations of the World Health Organization (WHO) and the Intellectual Property Office (IPO) of the Philippines. Both the WHO and the IPO noted that this proposed amendment would effectively limit the possibility of several patents being issued for what is essentially the same invention. Further, the WHO and IPO proposed that this amendment be patterned after Section 3(d) of the 2005 Amendments to the India Patents Law. Under the present state of the Intellectual Property Code of the Philippines, parallel importation, as defined in the prior paragraph, is not allowed because of the adoption of the domestic exhaustion principle of intellectual property rights as stated in Sec. 72.1 of the same law. The current provision effectively grants exclusive rights in the Philippines, including authority to import, on patented products in favor of the patent owner only. There is, thus, a need to amend this particular provision to allow for the doctrine of international exhaustion of intellectual property rights in drugs and medicines instead of the current domestic exhaustion of intellectual property right”. will help them in saving their market share. The data gathered by E-value serve shows the following trend: Tata motors takes the top lead in terms of the success rate of the number of patents filed and applications accepted. TVS motors stands as a leader in terms of filing maximum number of patent applications. On the other had patent filings by the three companies “Maruti Suzuki, Hero Honda and Ashok Leyland” accounts for just 2 percent because they depend on their global partners for the bulk of their technology. Section 3d of Indian Patent Act being Adopted as Role Model The senate in Philippines has recently passed “Quality Affordable Medicines Act” which intends to amend the existing patent law in line with section 3d of the Indian Patent Act. The main features of the bill include “disallowing the patent protection to the new property or new use of the existing drug”, “permit importation of cheaper drugs”, “Broader compulsory licensing provisions”, “adoption of Bolar type exemption” and “price ceiling under certain circumstances”. The excerpts from the text bill are presented below: First Patent Granted on Polymer Delivery System in India Patent has been granted to Skinvisible Inc., in India on polymer delivery system (Invisicare). The key advantage of products formulated with Invisicare is its unique ability to hold active ingredients on the skin for extended periods of time while resisting washoff, rub-off and perspiration. The patent protection to the said delivery system gives an extended life to products coming off patent and is part of new formulations for over-thecounter and prescription dermatology products. The Company is also seeking patent protection for its dermatology products formulated with Invisicare for this country. Large Number of Patent Filings by Auto-makers One of the strategies being adopted by the automakers to defend themselves against the increased competition is that they are now filing great number of patent applications in India. The automakers are becoming increasingly aware that the patented technologies TVS V Bajaj – Tug Of War Bajaj has a patent on Digital Twin sparkignition (DTSi) technology which was granted in India in July 2005. The use of DTSi technology in its range of products such as “pulsar, discover and crystal” is the major selling point. Bajaj claims that TVS has used the same patented technology and has threatened that it will sue TVS for infringement. TVS is also going to launch the new “125cc Flame” which will account for its major come back in the two-wheeler market and states that it is using three valves in place of two valves and is based on controlled combustion variable timing intelligent (CCVTi) and thus it does not infringe. TVS states that the technology it uses is the combination of in-house R&D effort VTi and AVL's patented three-valve engine technology. It also claims that improved mileage and performance is because of the use of three valves and not two plugs. TVS might file for revocation of patent stating that twin plug technology is a prior art. Experts states that the twin plug technology has been around for decades. It was used by aircrafts in 50s, where dozens of different patents existed on this very subject. crystalline form of Gleevec on the grounds that the said polymorphic form has failed to show enhanced efficacy over the already existing drug, which is the requirement for the patentability of new forms under section 3d. a. In May 2006, Novartis had filed legal petition in the Chennai High Court against the denial of its patent application for Gleevec. The Chennai High Court has transferred the case to the Indian Patent Appellate Board (IPAB) to decide whether the new form is patentable under section 3d. The case is still pending. b. Novartis had also filed the petition in the Chennai High Court challenging the constitutional validity of section 3d of the Indian Patent Act. The Court dismissed a petition noting that TRIPS itself provided for a Dispute Settlement Board to adjudicate all issues relating to the treaty. The Court stated that as the participating nations themselves had created a dispute settlement mechanism, we see no reason at all why we must disregard it. The Swiss pharmaceutical giant however said that it would likely not appeal the ruling. "We disagree with this ruling; however, we likely will not appeal to the Supreme Court. We await the full decision to better understand the Court's position," said Ranjit Shahani, Vice-Chairman and Managing Director, Novartis India Limited. MSF contended that if the patent is granted then the generic production would be on halt till 2018. Delhi network of positive people and the Indian network for people living with HIV/AIDS registered a formal opposition in 2006. In addition, there is widespread apprehension among the public that if patent is granted against this pending application the prices for this antiretroviral drug may be unaffordable and the Indian companies would be required to pay huge amount of royalties to Gilead Sciences to legally continue their generic copies as per new Patent Amendment Act. The US patents covering TDF generically and specifically are U.S. Patent Nos. 5,922,695 ('695) and 5,977,089 ('089), respectively. The US patent '695 covers TDF generically and the US patent '089 covers the TDF specifically. The said US patents claims the priority date later than 1995. Even though TDF is a new form of a known compound, Tinofovir, it was disclosed after 1995 and thereby making TDF eligible for patent protection in India. Now, the critical question is whether TDF has sufficient merit to overcome the barrier of section 3 (d). Novartis's Patent Application Covering New Form of Existing Drug under Prosecution The case has attracted a lot of attention (a) because of India's unusual section 3(d) which limits patentability and (b) because this is the first patent challenged in the newly enacted product patent regime. Novartis had filed a patent application in India covering the beta-crystalline form of the drug Gleevec. There were many generic companies, one of them being Natco, who had filed pre-grant opposition under section 25 (1) stating that the new form of the existing drug is not patentable as the beta-crystalline form of Gleevec (i.e. the new form of the existing drug) does not show enhanced efficacy over the existing drug Gleevec. In January 2006, Indian patent office rejected the grant of the patent covering the beta- Patent Application, covering combination of drugs for HIV, withdrawn Combivir (AZT/3TC) is widely used in AIDS treatment projects, and a considerable amount of the AZT/3TC consumed comes from Indian generic manufacturers such as Cipla, Aurobindo and Ranbaxy. Glaxo's patent application covering combination drug “Combivir” has been opposed by the Indian Network of People Living with HIV/AIDS (INP+), the Manipur Network of Positive People (MNP+), and the Lawyers' Collective HIV/AIDS on the grounds that the combivir is not a new drug and is merely a combination of two already PRE-GRANT OPPOSITION(S) FILED IN INDIA Tinofovir disoproxil fumarate (TDF) – as yet another target for pre-grant opposition In this case the target was to oppose the patent application covering to the salt form of existing drug. Gilead filed a patent application in India covering TDF, which is a pro-drug of Tinofovir developed to encounter bioavailability. The said patent application was opposed under section 25 (1) by MSF, on behalf of HIV positive patients, on the grounds that the subject matter is not patentable under section 3d as the Gilead's TDF is only new form of the existing drug. known drugs Lamivudine and Zidovudine which is thus not patentable under section 3d of the Indian Patent Act. The opposition is based on technical and health grounds. Opponents contend that if India grants a patent on the said AIDS drug, it will set a precedence that will hamper access to affordable AIDS medicines worldwide. "Decisions made by Indian patent offices are a question of life or death for people living with HIV/AIDS who rely on the availability of affordable AIDS drugs and other essential medicines made by Indian generic manufacturers," explains Anand Grover, Director of Lawyers Collective HIV/AIDS Unit. In an open letter of August 2006, GSK announced that it shall withdraw its patent application in India for the AIDSdrug Combivir”. GSK said in a communiqué from Thailand: "In June 2006, GSK instructed its agents in Thailand and India to withdraw this patent application. This means that GSK has no patent protection on Combid/ Combivir in Thailand or India, and is not seeking any." BUT on the contrary, Indian Patent Office, does not show any request for withdrawal for the Combivir patent application. Patent applications covering Ritonavir, Lopinavir and Kaletra, an HIV drug, opposed Recently, the Karnataka Network of Positive (KNP) and Indian Network for people living with HIV/AIDS (INP) have opposed the grant of a patent for three of Abbott's products — Ritonavir, Lopinavir and Kaletra, on the grounds that these are not true innovations. They contend that these are pre-1995 molecules, which have been slightly modified and these applications do not comply with Section 3(d) of the Indian patent law. Kaletra is a combination drug of Ritonavir and Lopinavir and the effects include non-refrigeration, more bioavailability, stability, more solubility in water. The opponents contend that the patent applications should be rejected on the grounds the both the drugs are pre- 1995 and the new combination tablet formed is no major innovation. Also, they state that patenting of these drugs would have dire consequences as such patented drugs shall not be available to public at affordable prices. The Indian patent office is expected to rule on these cases in the next few months. Eli Lilly loses patent over osteoporosis drug Eli Lilly & Co.'s patent application covering Forteo, which is the only one biotechnology drug available in India for the treatment of osteoporosis, has been opposed by the generic drug maker USV. After the hearing on pre-grant opposition the Kolkatta patent office has rejected the grant of the said patent application. The patent application has been rejected on grounds of prior knowledge and failure to establish enhancement of known efficacy. Indian patent law does not permit patent protection for drugs if it is patented elsewhere before 1995. Forteo is the synthetic form of PTH (parathyroid hormone) IPR PROTECTION - COPYRIGHT You Tube Stepping up to its Responsibility to End the Practice of Infringement You Tube is an online video leader and faced serious problem when it was sued by Viacom Inc.for $1 billion for showing thousands of clips, which the New Yorkbased company owned. There were no adequate measures taken up to remove copyrighted material from the website which lead to rampant piracy problems. YouTube said that it had been abiding by the copyright laws by removing the copyrighted material upon request. Google purchased YouTube eleven months ago and now they are ready to roll out the mechanism (filtering system) that will stop the posting of copyright-infringing videos. The Filtering system works by creating digital fingerprint of the original video and then compares it with every file uploaded on You t u b e . Thus, as a result the copyright s owners w o u l d have to submit original copy of t h e i r work and submit along with it the proof that they own the copyright. Pepsi Threatened to be Sued for Copyright Infringement Bob Carlos Clarke, who was Britain's most celebrated celebrity photographers, died last year. Now, the lawyers acting on his estates are gearing up to take legal action against “Pepsi” claiming that it has infringed the copyrights of Bob Carlos by using the image of a female tongue and lips in new advertisements. They are asking for adequate financial compensation for infringing his copyright. While “Pepsi” is constantly claiming that the use of such an image is sheer coincidence as they have never seen clark's work. The Economic Times reports that the recently released film, Salman Khan & Govinda starrer, “Partner” is facing bad time. Sony the copyright owner, is planning to sue the producers of the film “Partner” with the allegation that it is a copy of “Will Smith's Hitch”. Sony has planned to come into the cinema market in the big way and wishes to launch Indian language versions of hit Hollywood films. Copying by the Bolywood producers is creating a great hindrance in Sony's moves. Will Smith's Overbrook Entertainment and Sony Pictures Entertainment are contemplating a $30-million suit against Eros Entertainment and K Sera. Every single review of the film Partner had a mandatory line about the film being lifted from Hitch that a simple Google search for 'Hitch Hindi' makes it terribly apparent! Gone are the days, when you could, as a producer, with blissful arrogance, lift a Hollywood hit, scene by scene, throw in a couple of the action stars, diluted down action chops, a pirouette around the tree or two and make a hit out of it. This age of information has so shrunk the world, that seldom do we know the speed at which information is transferred and processed, to make its economic and financial changes and results all over the world from a singular event. As expected, K Sera and Eros along with the director have feigned ignorance of the whole matter. Suit Against Organizers of Durga Puja In a mood to celebrate Durga Puja with great pomp and show the organizers have made the pandal in the shape of Hogwart's castle as their pandal theme and have used models of Harry Potter. J. K. Rowling, the creator of “Harry potter” has sued the organizers on 8th Oct., asking for Rs 20 lakh, in the Delhi High court alleging that they have infringed the copyright. But the organizers have claimed that they were not aware of the fact that they have to seek permission of the author and are ready to apologize. $30-Million Suit for Copyright Infringement for “Partner” in Theft IPR PROTECTION - GEOGRAPHICAL INDICATIONS R e g i s t r a t i o n o f Geographical Indications – a Contentious Issue Geographical Indications are defined as "indications”, which identify a name of place of the origination of the goods. Geographical Indications determine that the goods possess particular qualities or a reputation due to that place of origin. It is also referred to as by names such as “appellation of origin” and “Indications of source”. The term “appellation” is understood as narrower than “indication.” This was defined in the 1958 Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, as the geographical name of a territory, which designates a product originating therein, the qualities of which are due exclusively or essentially to the geographical environment, including natural and human factors. Also, both the Paris Convention for the Protection of Industrial Property and the Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods use the term “indications of source”. WIPO Magazine has recently started the publication of new series of articles on geographical indications (GIs), which c a n b e v i e w e d a t http://www.wipo.int/wipo_magazine/e n/2007/04/article_0003.html. Multilateral debate regarding the international protection of GIs continues to center on the WTO-TRIPS Agreement. Two contentious issues under discussion in WTO are: a) Negotiations on the establishment of a multilateral system of notification and registration of GIs for wines (foreseen by TRIPS Article 23.4). As per the debate this could be either be done by establishing the comprehensive register with legally binding effect on all WTO members or International database. b) The extension to other products with the higher level of protection, which the TRIPS Agreement (Article 23) currently affords to GIs for wines and spirits. Those in favor of extending the additional protection, argue that the current provisions discriminate against producers of products other than wines and spirits. IPR PROTECTION - TRADE MARKS CFAI Loses Trademark for CFA Course CFAI and ICFAI had initially operated jointly in offering the CFA (Chartered Financial Analyst) course in India. ICFAI is the Hyderabad-based Institute of Chartered Financial Analyst of India and CFAI is the US-based Chartered Financial Analyst Institute. After falling out in 1998, both institutes applied for trademark registration. CFAI got its trademark registered in 2005, which was opposed by ICFAI. CFAI has finally lost the game. G L Verma, deputy registrar of trademarks, in a recent order said that the trademark issued to CFAI (formerly known as Association of Investment Management and Research) on July 13, 2005 was in contravention of rules and has thus been cancelled. "The trade mark shall be re-advertised in the Trade Marks journal giving proper opportunity to the general public to file the notice of opposition if any," he added. “accession to the Madrid Protocol will provide better and extensive protection to Indian mark owners abroad and ease the filing of applications by foreign mark owners in India”. Disclaimer: The IPR Spotlight presented by FICCI is for keeping the readers abreast of happenings in the IP World and is for information only. The contents presented in the newsletter do not represent FICCI's views. The interpretation of any laws contained herein should not be construed as legal advice and its validity must be verified from other sources. India to Join Madrid Protocol On 8th February 2007, India's Union Cabinet has approved India's accession to Madrid Protocol Concerning the International Registration of Marks, which was administered by World Intellectual property Organization. Indian Finance Minister P. Chidambaram stated