SIPP Facilitator: Facilitating Patents for the greater good at what cost?

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InvnTree had previously published an article discussing the Scheme for Facilitating Start-Ups Intellectual Property Protection in India, which can be found here.

The Indian Government, in an effort to encourage start-ups in India, launched the Scheme for Facilitating Start-Ups Intellectual Property Protection (SIPP) in January 2016. This scheme was initiated in an effort to reach out to start-ups and protect and promote their Intellectual Property Rights (IPR). Start-ups can avail patent, trademark and design services by paying the required statutory fees excluding professional fees. The Government would pay nominal professional fees for the services related to procuring the IPR to the advocates or patent/trademark agents in charge of handling the IPR process.

Start-ups can avail a complete start-to-end array of services under this scheme, including general advice, assistance in drafting complete/provisional applications, filing applications, preparing and filing responses to examination reports, appearing at hearings, contesting opposition and ensuring the final disposal of the IPR application.

The Government invited advocates, patent agents and trademark agents to sign up for the SIPP scheme. Consequently, several members of the IPR practicing community put forward their names and signed up for it. A public notice regarding guidelines for facilitators and start-ups was released in June 2016, and can be viewed here

The guidelines provided directions to the facilitators and the start-ups on filing and processing applications with regards to patents, designs and trademarks. It also included the fees payable by the government for services rendered by facilitators. The total professional fees for filing a patent and disposing it without opposition was INR 20,000 (approx. USD 333), and for disposing it with opposition services was INR 25,000 (approx. USD 416). Further, facilitators were not allowed to charge more from the start-ups apart from statutory filing fees. Considering the amount of time, work and expertise involved in the patenting process, the fees prescribed for patent services seem to appear far from reality.

The June 2016 guidelines did not provide complete clarity on matters such as whether a facilitator is allowed to decline application requests. However, in March 2017, another public notice was released which was related to such queries regarding the SIPP scheme. The government made it clear that registered facilitators should not charge any fee from the start-ups other than statutory filing fees. The notice further mentioned the occurrence of incidents wherein facilitators did not provide facilitation to start-ups by citing various reasons. The notice cautioned facilitators against such practices. Further, it stated that any act of denial of facilitation to a start-up would be considered as an act of misconduct in their professional capacity which may lead to the removal of their name from the list of facilitators. Additionally, there may be action for the removal of their names from the list of registered Indian patent/trademark agents. The notice can be downloaded here

Team InvnTree works with a lot of startups as well and is always keen to help them out with our expertise. However, in the regard of becoming a facilitator, our team at InvnTree made a conscious decision since the very beginning to not be part of the SIPP scheme. Hence, we did not register as a facilitator. We took into account the level of expertise needed in a niche area such as IPR, and concluded that the professional fees paid by the government are not agreeable for the amount of work that goes into the IPR process with respect to patents in particular.

We hope this article was a useful read. 

Please feel free check our services page to find out if we can cater to your requirements. You can also contact us to explore the option of working together. 

Best regards – Team InvnTree   

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Bombay High Court: no infringement in Cipla v. Cipla

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A Full Bench of the Bombay High Court announced their decision in the matter of Cipla Limited v. Cipla Industries Pvt. Ltd. on March 1, 2017. This case explores an important issue in trademark infringement regarding the use of a registered mark in a corporate or trade name, with respect to entities dealing with dissimilar goods/ services.

The Plaintiff, Cipla Limited, is a manufacturer of pharmaceutical products and has registered the trademark “CIPLA” under Class 5, which relates to pharmaceutical products. The Defendant, Cipla Industries, manufactures household items such as ladders and photo-frames, and has registered the trademark “CIPLA PLAST” under Class 21, which relates to household items such as utensils, containers, and combs, among others.

The Plaintiffs filed a suit against the Defendants for trademark infringement and passing off in 2012, claiming that the Defendants are violating the trademark rights of the Plaintiff by using “CIPLA” in their corporate or trade name. Two important things to note about this case are that the Defendant manufactured dissimilar goods when compared to the Plaintiff and the Defendants used the Plaintiff’s registered mark as part of their corporate or trade name.

This case takes precedence from the Raymond Limited v. Raymond Pharmaceuticals case, wherein the textile and clothes manufacturer, Raymond Limited (Plaintiff), alleged that Raymond Pharmaceuticals (Defendant) infringed on the Plaintiff’s trademark “Raymond” by using it in their corporate name.

Trademark infringement of well-known marks is dealt with under § 29(4) and infringement by use in trade or business name is dealt with under § 29(5) of The Trade Marks Act, 1999 as reproduced below:

§ 29(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which—

(a) is identical with or similar to the registered trade mark; and

(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and

(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.

§ 29(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.

Here, the Court reasoned that in order to establish infringement according to § 29(4), the Plaintiff has to show that the Defendant’s mark is identical or similar to the Plaintiff’s registered mark and that the Defendant is using the mark in relation to goods which are dissimilar to the goods corresponding to the Plaintiff’s registered mark, among other grounds mentioned in § 29(4). Consequently, since the case concerned the use of the registered mark as a corporate/trade name, §29(4) was overlooked in favour of §29(5). However, according to §29(5), infringement is only considered valid in case of “dealing in goods or services in respect of which the trade mark is registered.” Since the two entities in this case dealt with dissimilar goods, namely, textiles and medicines, the Court decided that the Defendants did not infringe on the Plaintiff’s trade mark rights.

The Court did not grant an injunction against Raymond Pharmaceuticals in Raymond Ltd. v. Raymond Pharma., and was of the view that this matter needed reconsideration. Hence, in Cipla Ltd. v. Cipla Industries, the Court sought to clear the matter by outlining four questions that needed to be answered for added clarity on this matter. The questions and their conclusions are as given below.

  1. Where a party is found to be using a registered trade mark as a 'name', viz., as a corporate or trading name or style, though in respect of goods dissimilar to the ones for which the trade mark is registered, is the proprietor of the registered trade mark entitled to an injunction on a cause of action in infringement under Section 29(5) of the Trade Marks Act, 1999?

Conclusion: No.

 

  1. Whether the use of a registered trade mark as corporate name or trading name or style is excluded from the purview of Sections 29(1)29(2) and 29(4) of the Trade Marks Act, 1999, and whether those Sections are restricted to the use of a trade mark 'as a trade mark', i.e., in the 'trade marky' sense?

Conclusion: Yes. The sub-sections will apply in "trademark versus mark" situations.

 

  1. Whether Sections 29(4)and 29(5) operate in separate and mutually exclusive spheres, i.e., whether, if the defendant uses the registered trade mark only as a corporate name or trading name or style in respect of dissimilar goods, a Plaintiff can have no remedy and is not entitled to an injunction?

Conclusion: Yes.

  1. Whether the view taken by the Division Bench in Raymond Ltd V Raymond Pharmaceuticals Pvt Ltd (2010(44) PTC 25 (Bom) (DB)) is a correct view?

Conclusion: Yes.

The Judges noted that § 29(4) uses the terms “in the course of trade” and “in relation to good and services”, which are not present in § 29(5). Further, the Court noted that “as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern” was not present in § 29(4). The Court made use of this difference to determine that § 29(4) would apply in a “trademark v. mark” situation while § 29(5) would apply in a “trademark v. trade/corporate/business name” situation.

In other words, § 29(5) states that an infringement has occurred with respect to a registered mark only when the goods in question are similar. Since the Plaintiff and the Defendant in this case dealt with dissimilar goods, namely household goods and medicines, the Judges decided that no trademark infringement was committed by the Defendants.

In our opinion, this decision would significantly limit the ability of entities with even well-known registered marks to act against infringement in certain situations. Further, the law regarding this matter seems to leave a loop-hole for potential infringers with dissimilar goods who may use a registered mark in their corporate or trade name.

We hope this article was a useful read. 

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Delhi High Court makes a decision in Hybrid Cotton Seeds case

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The Delhi High Court ruled in favour of Nuziveedu Seeds Limited in Monsanto Technology’s case against Nuziveedu on 28th March 2017.

India is the world’s largest producer of cotton, accounting for about 26% of the world’s total cotton production. Naturally, a case concerning the sale of cotton seeds involved in patent and trademark issues becomes important. This decision is related to a particular type of hybrid cotton seeds manufactured by Monsanto Technology called Bt cotton seeds, which are resistant to an insect called Bollworm that has the ability to destroy cotton crops and cause huge losses to farmers.

The Plaintiffs in this case are Monsanto Technology, Monsanto Holdings Private Limited and Mahyco Monsanto Biotech, all part of a multi-national agrochemical and agricultural biotechnology corporation and a leading producer of genetically engineered seeds. The Plaintiffs filed a case against Nuziveedu Seeds Limited, Prabhat Agri Biotech Limited and Pravardhan Seeds Private Ltd. (Defendants), which are Indian agribusiness companies that market seeds and supply hybrid seeds to Indian farmers.

The Plaintiffs alleged that the Defendants continued to market and sell Genetically Modified Hybrid Cotton Planting Seeds despite the termination of sub-license agreements between the Plaintiffs and the Defendants. The Plaintiffs also alleged violation of intellectual property rights of their registered patent (IA 214436) and their trademark sub-licenses for ‘Bollgard’ and ‘Bollgard II’. The Plaintiffs alleged trademark infringement and ‘passing off’ by the Defendants when they sold their products with labels of ‘Bollgard’. The Plaintiffs wanted to initiate a permanent injunction against the Defendants, along with disclosures, recalls of infringing products and award of damages.

RECAP OF PRIOR EVENTS

Monsanto developed and commercialised Bt cotton technology named BG I and BG II, and sub-licensed these technologies to Indian seed manufacturers including the Defendants in 2004, and renewed the license in 2015. A lifetime fee of Rs. 50 lakh was charged along with a recurring ‘trait value’ as compensation. Trait values are generally high, and contribute to a significant cost for the cotton seed producers. However, due to disputes related to the high trait value of the Bt cotton seeds, several states like Andhra Pradesh, Maharashtra, Gujarat and Telangana enacted price-control measures between 2007 and 2009, thus fixing the cotton seed prices and the trait values chargeable by the seed developer. The fixed trait values were significantly lower than the ones charged by Monsanto, making them more affordable for cotton-growing farmers.

In July 2015, Nuziveedu approached Monsanto to discuss charging the cotton seed packets at the trait value rates determined by the local government, and reconciling accounts for the excess trait value that was paid after comparison with the trait value set by the legislation. Monsanto however, refused and sent a notice to Nuziveedu in November 2015 regarding the termination of their sub-license with Nuziveedu for non-payment of duties. Consequently, Nuziveedu and some other seed producers approached the Competition Commission of India (CCI), alleging “abuse of dominant position” and “anti-competition agreements” by Monsanto. Subsequently, the Commission found that Monsanto violated Sections 3 and 4 of the Competition Act, 2002, which involve the allegations mentioned previously.

Meanwhile, during these proceedings, the central government fixed the minimum support price (MSP) and trait value of Bt cotton seed packets for the financial year 2016-2017 for the whole of India under the Cotton Seeds Price (Control) Order, 2015. The MSP for BG I was fixed at Rs. 635 per packet with zero payable trait value and Rs. 800 per packet for BG II, inclusive of seed value, trait value and taxes.

Further, the Government of India published the "Licensing and Formats for GM Technology Agreement Guidelines, 2016" through the Ministry of Agriculture and Farmers Welfare. The Guidelines obliges the licensor and licensees to ensure that all agreements executed by them "fulfil the criteria" provided therein, primarily ensuring non-discriminative licensing to encourage competition and availability of GM cotton seeds to cotton farmers at fair and reasonable prices. In particular, the fourth para of these Guidelines direct the Licensor and the Licensee to conform the sale of cotton seeds with the trait value, seed value and MSP values fixed by the Central Government, for the benefit of cotton farmers.

             Subsequently, the Plaintiffs initiated the present lawsuit in February 2016 before the Delhi High Court. The High Court allowed the Defendants to sell seeds that were manufactured and packed before 30th November 2015 and include the Plaintiff’s trademark on the packaging. The High Court ordered the Defendants not to sell seeds manufactured after that date until further orders of the Court. These directions were subsequently modified by various subsequent orders from the High Court. The next issue of contention involved subsequent seeds that may be reaped from the planted Bt cotton seeds.

            DECISION OF THE HIGH COURT

When the Plaintiffs alleged infringement by the Defendants, the Defendants responded by filing a counter-claim seeking revocation of the suit patent. However, the Court decided not to look into the issue of patent validity at the interim stage as it would have required evidence to be led through a trial.

The Defendants also tried to make use of Section 26 of the Plant Variety Protection Act, which may be used when a new plant variety is registered under the same Act. According to this Act, a party that developed a new plant variety, of which genetic material has been used in an invention, may seek to share potential benefits arising from the invention. The Court rejected the Defendant’s claims related to Section 26.

The Plaintiff on the other hand, argued that their contract allowed the termination of the contract if royalty payments were not received within a fixed period. The Defendant countered that the Plaintiff was required to renegotiate the rates following the revision of cotton seed rates by various State Governments.

The High Court was of the opinion that the termination of the contract by the Plaintiffs was incorrect. The Judge states: “the Plaintiffs were duty bound to consider the request of the defendants as made by the communications beginning July 2015, for modification of the terms as to the rate of trait fee payable under the 2015 sub-license agreements for which the mechanism had earlier been agreed upon in the form of Article 11.03. Since the plaintiffs did not adhere to their obligation under the contract, the demand of payment under the contract terms being not lawful, it apparently being higher than the trait fee permitted by the law in force, the defendants could not have been found to be in default or to have breached their obligations within the meaning of Article 9.02” (Emphasis added)

The High Court emphasized on two points: Article 11.03 of the sub-license agreement between the Plaintiffs and the Defendants, which obliges the parties to keep the contract in accordance with the local laws at all times; and Section 23 of the Indian Contract Act, 1872 which forbids unlawful consideration. Further, the High Court pointed out the illegality of Monsanto’s sudden termination of the contract and hence, upheld the contract between the Plaintiffs and Defendants. Additionally, the Court allowed the Defendants to continue using the technology by paying trait fees in accordance with the prevalent State laws.

This matter related to Bt cotton seeds saw multiple parties playing important roles, from the Plaintiffs and Defendants to the State and Central Governments, including a few other government bodies. However, what comes as a relief is that in the end, the order was favourable towards the real beneficiaries of this situation, namely, the numerous Indian farmers who wish to continue growing cotton crops at reasonable and affordable costs.

We hope this article was a useful read. 

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Translation of literary work and copyright protection

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Section 14 of the Copyright Act (‘Act’) includes the exclusive right of authors to either make a translation of literary work, or authorize to make any translation or adaptation of the work, reproduce the work, issue copies, perform and make cinematographic films/sound recordings. Translations are secondary or derivative works. The derivative work becomes a second, separate work independent in form from the first, provided the transformation, modification or adaptation of the secondary work is substantial to be protected by copyright. However, if a copyright in the original work persists, only the author of the original copyrighted work has the right to authorize or grant a permission/license to the author of the derivative work i.e. a translation of the original work.

On February 8, the Bombay High Court passed an interim injunction to restrain distribution of a translated version of the Bhagavad Gita by Thomson Press.

History and Facts

Plaintiff, Bhaktivedanta Book Trust (“BBT’) holds the copyright in the translation of the Bhagwat Gita under the title “Srimad Bhagvatam” which is a reprinted version of the Bhagavad Gita. There are copyright registrations issued to the Plaintiff. Plaintiff had alleged Defendant, Thomson Press of reprinting a ‘classic’ version of Srimad Bhagvatam, a translation in which the Plaintiff held copyright. The Plaintiff's representative took photographs of the work being reprinted. The odd thing about this reprint is that it does not even claim to be an independent copyright. It is in fact, a reprint and a reproduction of the Plaintiff's work because it says it is a “classic edition of Srimad Bhagavatam”, which in reality is the Plaintiff's work. Defendant Thomson Press claimed having a license agreement for the publication of this work and several other works with the Plaintiff, which was not true and no such evidence of license agreement existed.

Order

The Bombay High Court had passed an interim order and stated that this order will operate till 22nd March 2017. The Court, in its order had ruled that the Defendants, by themselves, partners, distributors, dealers, stockists, servants, subordinates, representatives, agents, licensee, and all other persons claiming under them, be restrained from printing/publishing using any means such as reproducing, displaying, advertising, exporting, selling, offering to sell and promoting impugned works in any manner, which violates and infringes copyright of the plaintiff in their work of Srimad Bhagavatam.

Read the order here 

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India National Intellectual Property Awards 2017

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Though the Intellectual Property Rights in India was fully stable from a legal, judicial and administrative point of view, it was not until recent that the individuals and legal entities within India started taking it seriously. The importance of obtaining IPRs and enforcing them have caught on quickly with the Indians, in recent years. Indian IP offices have also undergone some major upgradation in terms of infrastructure, human resources, computerization of IP offices, databases and websites among others.

National IP Awards, intended to encourage creativity and innovation and management of intellectual property portfolio that influences the success of business in different industry segments, has only added to the growing repute of IPRs in India. The main purpose behind this is to make Indians recognize their own IPRs and also respect others’ IPRs.

Every year, the Office of Controller General of Patents, Designs and Trademarks (CGPDTM) recognizes individuals and enterprises who have done exceptionally well or achieved something great in the field of IPR, like creation and commercialization of IP and confers them with the National Intellectual Property (IP) Awards.

This year too, the Office of Controller General of Patents, Designs and Trademarks (CGPDTM), in association with the Confederation of Indian Industry (CII), will be presenting the awards at an event in Delhi on the 26th of April, coinciding with the World IP Day.

There has been a total of ten (10) categories included this year in the national intellectual property awards programme. They are as follows:

  1. Top Individual for Patents & Commercialization
  2. Top Indian Academic institution for Patents & Commercialization
  3. Top R & D Institution/Organization for Patents & Commercialization
  4. Top Public Limited Company/Private Limited Company for Patents & Commercialization in India:

4(a). Indian owned company

4(b). MNC/Foreign owned company

  1. Top Indian MSME for Patents & Commercialization:
  2. Top Start-up for IP Commercialization
  3. Top Indian Company/Organization for Designs and Commercialization
  4. Top Indian Company for creating Global Brand (s)
  5. Top Individual/organization for Best facilitation of Registration of GI and Promotion of Registered GI in India.
  6. Best Police Unit (Police District/Zone in a commissionerate) for Enforcement of IP in the Country.

Each award (including categories under 4 (a) and 4 (b) separately) will carry a cash prize of Rs. 1,00,000/- and citation.

The World Intellectual Property Organization (WIPO), under the WIPO Awards Program, has proposed the idea to link three annual awards with certain categories of the National IP Awards 2017. The WIPO Awards are as follows:

1.   WIPO Medal for Inventors – Top Individual for Patents & Commercialization

2.   WIPO IP Enterprises Trophy – Top Indian Public Limited Company/ Private Limited Company

3.   WIPO Users Trophy – Top Indian Company for creating Global brand

The number of Intellectual Property Rights registered/granted will not be the sole basis for zeroing in on the awardees. Instead, the utilization of these IPRs as a strategic tool in commerce and industry, along with the contribution they bring to the society, will be taken into consideration as well. Performance in the last 3 calendar years, i.e., 2014-16 will be taken into consideration for the purpose of National IP Awards 2017.

The following parameters will be considered for selection:

1.   Number of IPRs filed/granted/registered.

2.   Growth in IPR portfolio in the last three calendar years.

3.   Leveraging of IPRs for achieving commercial goals (manufacturing, licensing, launching of new products/processes associated with granted/registered IPRs marketing / export etc.)

4.   Enforcement of IPR by police, actions such as IPR- related FIR filed, raids/seizures made, and charge-sheets filed for IP infringements.

5.   In case of Top Indian Company for creating Global Brand(s), brand value, turnover outside India under the brand where it has worked, number of such global brands and global acceptance

An applicant, to be eligible for an IP Award, should be either an Individual or a Legal Entity. MSME, Startups, major industries, firms and societies registered in India, Indian subsidiary of a transnational corporation, Indian Academic institutions and R&D institutions registered as a legal entity in India are also eligible for the IP Awards.

Awardees will be selected by a jury comprising IP professionals, industry association, academia, R&D professionals and representative(s) of the Government of India. Also, in case of any specific issue, the jury reserves the right to co-opt a suitable person as a special invitee.

The details to all of this can be found here

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Delhi High Court: Swiss Pharma cannot hang on to its drug

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Trastuzumab, a drug to treat breast cancer, was developed by Roche. The court heard pleas from Roche and Indian pharma firms Biocon, Mylan and Reliance Life Sciences, on the issue of the sale and marketing of biosimilar drugs based on Trastuzumab.

Roche argued that it spent years of research and funding in developing Trastuzumab and conducting related tests and studies. Roche accused the Indian firms of including a copy of its research and studies in the package of their drugs. Roche further asserted that those companies should not be allowed to name their medicine as Trastuzumab, and they need to call it Biocon’s Trastuzumab or Mylan’s Trastuzumab.

Biocon and Mylan responded by saying that the Drugs Controller General of India (DCGI) asked them to quote the clinical data of Roche’s Trastuzumab in their respective package inserts. Biocon also stated that it manufactures the medicine for both companies, wherein Biocon sells it under the name Canmab and Mylan sells it under the name of Hertraz.

However, as Roche claimed that Biocon and Mylan’s package inserts were not approved by the DCGI, the bench asked to check and inform the court regarding the DCGI’s approval. Further, the bench was of the opinion that since the biosimilar medicine was made through an abbreviated process, companies like Biocon and Mylan need not go through the entire testing process again. Further, in a hearing on March 2nd, the DCGI confirmed that the medicines and package inserts of Biocon and Mylan were granted approval. Hence, the court told Roche that it cannot have a say against the sale and marketing of the biosimilar drugs once the DCGI has given an approval.

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Adding inventors to or removing inventors from an India Patent Application

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Listing correct inventors in a patent application is important. An incorrect listing may not only lead to emotional issues, but also loss of rights, among other issues. Incorrect listing may have occurred by omitting names of individuals, who should have been named as inventors in the patent application. On the other hand, incorrect listing may have occurred by including names of individuals, who should not have been named as inventors in the patent application. In any case, such lapse can be set right. 

Procedure for adding an inventor to a patent application

Section 28 of The Patents Act, 1970 deals with addition of inventor(s) to a patent application, and the corresponding rules are 66, 67, 68 and 69 of The Patent Rules, 2003. A request to add an inventor to the patent application can be made by any of the below listed entities, based on the circumstances.

  1. Applicant for the patent
  2. Applicant for the patent and the person who has to be added as the inventor
  3. The person who wishes be added as the inventor

1. Request by applicant for the patent

The applicant for the patent can make a request to the Controller to add a person as one of the inventors, if the person who has to be added as the inventor is also the applicant or is at least one of the applicants.

As best practice, it would be wise to submit to the Controller, consent of all the applicants, in case of joint applicants.

2. Request by applicant for the patent and the person who has to be added as the inventor

The applicant and the person who has to be added as one of the inventors can make a request to the Controller, if the person who has to be added as the inventor is neither the applicant nor one of the joint applicants.

3. Request by the person who wishes to be added as the inventor

The person who wishes to be added as the inventor can make a request by himself. Such a scenario might occur when the person in not an applicant for patent on record, and the applicant on record is not willing to make the request to the Controller. On receiving a request of this nature, the Controller will give notice of the claim and the statement made by the person to every applicant for the patent and to any other person whom the Controller may consider to be interested. The Controller may, if required, provide opportunity to be heard to any person to whom he had sent the notice, before deciding.  

Procedure for deleting an inventor from a patent or patent application

Section 28(7) of The Patents Act, 1970 deals with deletion of inventor(s) from a patent application, and the corresponding rule is 68 of The Patent Rules, 2003. Under Section 28(7), only those who were added as inventors as a consequence of the request(s) discussed earlier, can be removed. Such a request may be made by any person, and at any time. On receiving a request to certify that such a person should not have been named as the inventor, the Controller may, if required, provide opportunity to be heard to any person whom he thinks might be interested, before taking a decision.

The above discussed requests to add or remove an inventor should be made in Form 8 with the prescribed fee.

It shall be noted that, the Act does not have exclusive provisions for removing inventors who were named while filing the patent application. However, a petition can be filed by relying on sections relevant to inventorship to request the Controller to remove an inventor who was named at the time of filing the patent application.

Apart from addition or deletion of inventors, correction of names of inventors who are already on record is also possible. Such corrections may be required because of clerical errors while filing the patent application, or by reason of change in a person’s name. Request to make such corrections should be made using Form 13 with the prescribed fee. 

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Adding or removing applicants from an Indian patent application

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Organizations often face situations wherein the names of applicants may need to be added or removed from an Indian patent application. The Indian Patent Act envisages addition or removal of applicants to occur broadly in three scenarios. The scenarios are dealt under Section 20 (1), (4) and (5), and the corresponding Rules are 34(1), 35(1), 36(1).

Section 20(1) and Rule 34 deal with a scenario wherein one or more applicants need to be added or removed by virtue of an assignment, an agreement or operation of law. The assignment or agreement has to be made in writing by the existing applicant of the patent. Further, in case there are two or more joint applicants currently on file, then consent of each of the joint applicants is required. In case a new applicant is being added, the assignment, agreement or operation of law should be to the effect that, if a patent were to be granted eventually, then the new applicant would be entitled to the rights of the existing applicant. Alternatively, the assignment, agreement or operation of law should be to the effect that, if a patent were to be granted eventually, then the new applicant would be entitled to an undivided share in the patent. The request for addition or removal of applicant should be accompanied with original assignment, agreement, an official copy or notarized copy for inspection by the Controller. The Controller may, at his discretion request further proof of title or written consent.

Moving on, Section 20(4) and Rule 35 deal with a situation wherein an applicant, among joint applicants, dies before the patent is granted. The surviving applicant(s) may request the application to proceed in their name alone. However, the application can proceed in the name of the surviving applicant(s) only if there is consent, to that effect, given by the legal representative of the deceased. The request must be accompanied by proof of death of the joint applicant and consent by the legal representative of the deceased. Additionally, documentary evidence to prove that the person giving the consent is the legal representative of the deceased applicant has to be provided. The documentary evidence can be in the form of a certified copy of the will of the deceased applicant or letters of administration in respect of the estate of the deceased applicant.

Section 20(5) and Rule 36 deal with dispute arising between joint applicants of a patent. The dispute may be related to whether the application should be proceeded with or the manner in which the application should be proceeded with. In case of such disputes, any of the applicants can make a request to the Controller seeking direction. The request to the Controller must be accompanied by a statement which fully discloses the facts which the applicant making the request relies on. The request must also set out the outcome or direction sought by the applicant. The Controller will send a copy of the application and the statement to every other joint applicant giving them an opportunity to respond. The Controller will also give all the concerned parties an opportunity to be heard, and then give direction as he thinks fit. The Controller may give directions to enable the application to proceed in the name of one or more of the parties, or to regulate further proceedings as needed.

An application to the Controller to add or remove applicants under the provision of any of the above discussed sections should be made in FORM 6 with the prescribed fee. The form is used for providing details such as, names of applicant(s) to be added or removed, names of original applicants and reason for change, among other details that are to be entered.

Form 6 may also be used to add or remove an applicant from an Indian national phase application where change in applicant has occurred after the international filing date, and the change is not reflected in a notification from the International Bureau (Form PCT/IB/306).

It shall be noted that adding or removing an applicant is not the same as changing or correcting the name of an applicant. In case of clerical errors or legal name change of a person or an organization, the change can be made using Form 13.

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Place of business: How important is it for instituting a suit of infringement?

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In an order dated 22nd July, 2016, a single Judge of the Delhi High Court delivered his Judgement over a suit of infringement of trademark. The single Judge believed that the Court had territorial jurisdiction to entertain the suit. However, the alleged act of infringement took place in Kolkata (where the Defendant’s Office is located), while the Plaintiffs do not even have an Indian presence. A permitted user of the Plaintiff’s trademark has a presence in Delhi. In light on this, can the permitted user institute the suit? Does the Delhi Court have the authority to provide judgement on this matter? Let’s see.

History and Facts

This dispute arose when US based Exxon Mobil Corporation (“EMC”) alleged infringement of its registered trademark “Exxon” by Kolkata based “Exon Engineering Corporation” (“EEC”), and filed an action before the Delhi High Court. Exxon Mobil Corporation (Plaintiff 1), does not have an office in India. However, a wholly owned subsidiary (Plaintiff 2) of Exxon Mobil Corporation has an office in Delhi and is a permitted user of the trademark “Exxon”. Kolkata-based Exon Engineering Corporation (Defendant) is the registered proprietor of the trademark “Exon Engineering Corporation” and has an office in Kolkata. Section 134(2) of the Act empowers a plaintiff to institute a suit for trademark infringement at any place where its office is located. The plaintiffs here contended that the Delhi High Court was vested with the jurisdiction to adjudicate upon the matter as Plaintiff 2, being the permitted user of the trademark, has its presence in Delhi. On the other hand, the Defendant argued that it was carrying on business in Kolkata, so a court in Delhi would not have jurisdiction to adjudicate upon the matter. Further, the Defendant argued that in light of Section 53 of the Act, Plaintiff 2, by being a permitted user, could not institute the suit. Further, the Defendant was of the opinion that Section 134(2) could not come to the aid of Plaintiff 2, since Plaintiff 1 does not have an office in India.

The judge held that the explanation to Section 134(2) of the Act allowed this, and ruled that a “permitted user” would be empowered to institute a suit. The judge based this judgement on a case which involved an interpretation of Section 62(2) of the Copyright Act. The judge also accepted Plaintiff 2’s contention that Plaintiff 1 would be deemed to use the mark in Delhi owing to its use by its wholly owned subsidiary. The Defendant appealed before the Division Bench against this judgment, resulting in the judgment under consideration.

Division Bench Ruling

The Division Bench first looked into whether or not Plaintiff 2 could institute a suit in this case. The Division Bench held that Section 53 of the Trademarks Act clearly prohibits a permitted user from instituting a suit for infringement. The Bench pointed out the difference between a permitted user and a registered user and how, under the provisions of the Trademarks Act, a registered user and not a permitted user of a trademark can institute a suit.  Hence, the Bench ruled that Plaintiff 2 was not legally empowered to institute the suit.

Next, the Court went on to decide whether the Delhi High Court had jurisdiction to adjudicate upon the suit. For this, the Bench relied on the case of Ultra Home Construction vs. Purushottam Kumar Chaubey. The Bench assumed Plaintiff 2’s office in Delhi to be a subordinate (branch) office. Further, referring to Sections 134(2) and 62(2) of the Trademarks Act, 1999, the Bench contemplated that when the cause of action neither arises at the place of the principal office nor at the place of the subordinate office but at some other place, the Plaintiffs could institute a suit at the place of its principal office but not at the place of its subordinate office. The Bench then ruled that the Plaintiff 1's principal office is in USA and its assumed subordinate office is in New Delhi, but the cause of action has arisen in Kolkata. Unfortunately, the place where the plaintiff No.1 could sue under Section 134(2) would then be in USA which is not available to it because Section 134(2) is in respect of the suits filed in India alone. Consequently, the Delhi Court would not have territorial jurisdiction to entertain the present suit. Therefore, the Bench reversed the single judge’s decision and rejected the plaint for lack of jurisdiction.

The court order can be found here

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Delhi High Court suspends ban on Ajanta for export of Bayer’s Patented Drug

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In a recent court order, Delhi High Court gave a setback to German company Bayer, by lifting a suspension order that restrained an Indian drug company, Ajanta, from producing and selling overseas a generic version of Bayer’s erectile dysfunction drug, vardenafil.

The patents filed by Bayer, that form the basis of the case, were originally applied for in 1998, after which they came into effect from 2003 for one salt of the drug and since 2008 for another. Ajanta had appealed to lift the stay order by claiming that Bayer was not manufacturing the drug in India and that Bayer’s interest could be protected by payment of royalty to Bayer consisting of some percentage of the amount gained by Ajanta from the exports. In fact, Ajanta also agreed to provide a track of its records regarding sales and profit received from exports of Bayer’s drug.

In furtherance, Bayer accepted that it has not exploited its drug commercially in India. Based on all this, the court said "In these circumstances, though the non-user cannot be set up as a defence to the suit for infringement, upon the self-interest of the patentee being balanced against the larger public interest, equity demands that absolute or unconditional temporary injunction be not granted inasmuch as it would result in the manufacturing activity and the resultant exports of the impugned products of the defendant being ground to a halt resulting possibly in not only loss of employment but revenue to the State as well.”

The court also indicated that the stay order was suspended subject to the condition that Ajanta shall provide the court with all records of the production and export of the drug on a quarterly basis. In addition, Ajanta cannot distribute or sell the drug in India until a patent infringement lawsuit that was filed by Bayer is resolved. Thus, the application by Ajanta was disposed of and the infringement suit by Bayer remains due for hearing.

Read the court order here.

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