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