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 email@example.com Copyright Sheetal Chopra (Senior Assistant Director) Geographical Ph.- (Dir.) 23766930 Indications firstname.lastname@example.org 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.