Registration of GUIs as Designs: Pulling a Thorn from our Side
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Graphical User Interfaces (“GUIs”) are “interfaces that allow users to interact with electronic devices through graphical icons and audio indicators such as primary notation, instead of text-based user interfaces, typed command labels or text navigation”, according to Wikipedia. To put it in simpler terms, GUIs are basically windows, icons, cursors and buttons that let us enjoy the benefits of computerization without having a degree in coding.
What a GUI essentially does is capture a string of text commands that we would otherwise have to type out and execute and collate that into a single visual component. Rather than having to open Run and type in the command for opening the Control Panel, one may simply scroll over to the little blue box-like icon called Control Panel and double-click the same.
As the above explanation highlights, GUIs essentially make it easier to navigate using a computer or any other software, and when today’s world looks at tailoring and customization to the needs of an average consumer, a friendly UI and UX design becomes key in ensuring that customers are happy, satisfied and are recurrent consumers of your software or service.
Why is Intellectual Property (“IP”) involved? IP has always been a businessperson’s tool in maintaining their competitive edge, by rewarding their efforts for pushing the envelope of innovation in their respective industry. Naturally, as the more traditional forms of protecting innovation expanded to incorporate the developments in the software technology space, the question of granting industrial design protection to GUIs arose. This article shall highlight the struggle of registering designs over GUIs in India, and also enjoin a proposal to resolve the situation by drawing from the experience of other jurisdictions.
The Hindrance to Design Registrations over GUIs in India
India adopted the Locarno Classification system for the registration of articles as designs by way of the Design Rules 2001 and the amendment in 2008. Pertinent to note here is that the Locarno Classification specifically created a Class 14 – Recording, telecommunication or data processing equipment, with a sub class “Class 14-04 – Screen Displays and Icons”. Now, given the accession of India to the Locarno Classification and the amendments to the Rules, it would seem but logical for the Design Office to explicitly agree to granting registrations over GUIs. But when Amazon attempted to register a design (Application Number: 240305) for a GUI for “providing supplemental information of a digital work to a display screen”[1], the Design Office refused the application, holding that the GUI was not integral to the article and was only a functional aspect of the article; along with the fact that the GUI was not a finished article of manufacture having consistent eye appeal and being able to be sold separately.
Interestingly enough, however, the Designs Office has allowed design registrations to GUIs post the Amazon decision, for GUIs not only pertaining to computer screen layouts, but also for GUIs pertaining to mobile screens and car display panels[2]. A seemingly common feature between the accepted registered designs for GUIs is that they have their priority established in a foreign country. Does this then mean that a possible registration in a foreign country implies the overcome of objections as to ‘design’ and ‘article’ under Sections 2(a) and 2(d) in the Designs Act 2000? The practice of patent law allows the use of patent grants over an invention in foreign jurisdictions to overcome objections of novelty and inventive step at the Indian prosecution stage. Whether the logic of this practice has now been extenuated into the field of designs is a bit of a grey area.
Registration of Designs in Other Jurisdictions
A landmark case speaking to design protection for GUIs in the US is the case of Ex Parte Strijland[3], which although rejected an application for registration of a GUI, nonetheless augmented the rules of allowability for a design patent for GUIs. The Board of Patent Appeals and Interference (“BPAI”) held that had the applicants included in the initial application that the Icon for which design protection was to be granted was to be applied to a display screen of a programmed computer system, and contained additional representations of the design being applied to the intended article, the application would have satisfied the subject matter requirement of US patent law (35 USC § 171). Ex Parte Tayama[4] is a similar case where the BPAI reiterated the same rational. The USPTO has subsequently come up with Guidelines for Examination of Design Patent Applications For Computer-Generated Icons[5] which capture the above elucidated principles.
There are a few important takeaways from this case. One, the Board explicitly agreed that a programmed computer system would suffice to be termed as the article of manufacture, and the GUI would be an ornamentation of the computer. Secondly, the Board took note of the declarations made by the inventors as to how the design was an integral part of the programmed computer system, which enunciated the operation of the icon (which when opened transitioned to a window which connected to a host system for retrieving and displaying information).
The first point counters the requirement of the Indian Design Office that the GUI does not fulfill the requirement of ‘article’, as the computer itself would be considered as the article under Section 2(a). The second point counters the objection of the Design Office as to the GUI not being an integral aspect of the article. The Designs Office appears to have muddled two important features of GUIs when examining the Amazon application. The first aspect is that while a particular function may not be protectable, a GUI specifically engenders one of the myriad expressions of a particular function, say the depiction of a start screen. The second aspect is that in achieving the desired aesthetic appeal of the programmed display screen, the GUI is an integral aspect of creating this result. To illustrate this further, one cannot claim protection over a clickable button, but one can claim protection over their depiction of a specific button. Similarly, protection cannot be claimed over a pop-up dialogue box, but over the specific representation of it.
GUIs in the EU are generally registered under the Community Design Regulation (Council Regulation No. 6/2002/EC), but may also exist as unregistered Community Designs. Article 3(a) of the Community Design Regulations clearly provides that a ‘design’ only consists of the appearance of the whole or a part of a product, comprising lines, colours, contours, etc., while a ‘product’ under Article 3(b) of the Community Design Regulation consists of an industrial or handicraft item other than a computer program, and particularly includes graphic symbols and typographic type-faces. It is however clarified that GUIs are not barred protection by Article 3(b), as GUIs would not only fall under the categories of graphic symbols and typographic type-faces, but also the intended exclusion of computer programs is to give effect to the carved out spheres of technical functions and the source codes of computer programs, which are protected by patent law and copyright law respectively[6]. Furthermore, EU design protection does not require the embodiment of the design on the intended article, meaning that applications are usually made without reference of the hardware or display screen to which the design would be applied to.
Additionally, while the Australian Designs Office does not accept design registrations for GUIs, GUIs are allowed to be registered by merely clearing a formalities check, without undergoing substantive examination. These design registrations remain uncertified, and do not embody an enforceable right as they are unexamined. The Australian Designs Office objects to their registration on the ground that the article to which the design is to be applied is considered in a state of rest, and for electronic devices, this means that the powered-on appearance is discounted. Further, GUIs and icons are not considered to be products by themselves. However, a review conducted in 2015 of Australian Design Law proposed that virtual designs be covered by design protection, by allowing them to be examined in their powered-on state, which has been accepted by the Australian Government[7].
The Designs (Amendment) Rules 2021 and the way forward
On 25th January 2021, the Ministry of Commerce and Industry notified the Designs (Amendment) Rules 2021, which substituted Rule 10 of the Design Rules 2001, and incorporated the current edition of the “International Classification for Industrial Designs (Locarno Classification), which provides for a Class 32, allowing for two dimensional graphic designs, graphic symbols and logos, with the requirement of satisfaction of Section 2(a) and 2(d) of the Act tacked on as a proviso.
Curiously enough, as pointed out here, the Manual of Design Practices & Procedure cites a UK decision, Ferrero and CspA’s Application[8] wherein the ratio of the Court, reiterated by the Manual, is that design features that are internal but visible only during use may be the subject matter of registration. This effectively defeats the need for a constant eye appeal of the design. Another practice that seems to have evolved through the registration of GUIs as designs is the depictions of the display screens in solid lines, which appears to be reminiscent of the USPTO’s requirement that representations of the GUI be augmented with the surfaces to which it is to be applied to, i.e., the surfaces to be ornamented. The Manual, however, at page 19, specifically provides that dotted lines are to be used to depict elements which are not part of the claimed design. Ideally, monitors and display screens should be depicted with dotted lines, to ensure that the monitor or display screen itself is a part of the registered design. These features only serve to provide context to the design, as to the article to which it is to be applied to and resolving this issue can go a long way in simplifying the concept of protection given to GUIs.
Continuing Challenges
While currently, GUIs appear to have been registered for stand along or single screens, the question then arises as to the scope of protection for animated or projected GUIs. The Korean Intellectual Property Office currently allows applicants to submit design applications in animated formats, by way of .swf, .mpeg, .wmv and .gif files. Animation GUIs hold a sufficiently higher level of aesthetic appeal, which can also avoid the need for having to file multiple design applications for variations of a single GUI. The Indian law as it stands follows a reactive approach, rather than a pre-emptive approach, and the registration of animated GUIs has a long road ahead.
That being said, GUIs in India seem to take a middle path between the Australian approach and the US/EU approach, where design registration is granted to GUIs despite the fact that no clear guidance has been provided post the Amazon decision. One can only hope that the adoption of the current edition of the Locarno Classification would imply a drop of the limitations of representations of GUIs in design applications, given that Class 32 contains as an explanatory note the item “Graphic designs [two-dimensional]”, which going by the EU law on Community designs, does not require a depiction of the physical embodiment on which the GUI would be displayed. Paraphrasing Rachel Stigler’s pronunciation of GUIs, the future of design protection for this seems GUI (read gooey).
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[1] Graphical User Interface Protection puts Indian Patent Office in a fix, RNA IP Attorneys, November 24, 2014, Available at https://rnaip.com/graphical-user-interface-protection-puts-indian-patent-office-in-a-fix/
[2] Design Application Numbers 274917, 274918, 284680, 276736, 260403
[3] 26 U.S.P.Q.2d (BNA) 1259, 1260 (BPAI Apr. 2, 1992)
[4] 24 U.S.P.Q.2d (BNA) 1614 (BPAI Apr. 2, 1992)
[5] https://www.uspto.gov/web/offices/com/sol/notices/icon.html
[6] Design Protection of Graphical User Interfaces, Venner Shipley, December 2, 2019, Available at https://www.vennershipley.co.uk/insights-events/design-protection-of-graphical-user-interfaces/
[7] Registered Design Protection of Screen Icons and GUIs in Australia, Michael Buck IP, Aug 12, Available at https://www.patentsandtrademarks.com.au/registered-design-protection-of-screen-icons-and-guis-in-australia/
[8] (1978 RPC 473, HL)
Protecting an invention – A discussion on patents and trade secrets
Patents and trade secrets are intellectual property intended to protect inventions, using different approaches. “Patent” gives one right to exclude others from making, selling, using or importing a claimed product or process, in exchange of fully public disclosure of your invention. In lieu, “trade secret”, a self-explanatory term pertains to information, used in business (“trade”), that is not supposed to be known to the public or others in the industry (“secret”). Trade secrets covers valuable and secret information from formula, process to business information, which derive its commercial value from being kept secret and company’s reasonable efforts in keeping trade secret as “secret”. Google search algorithm makes a good example for a trade secret. The same information can be protected under a patent as well as trade secrets. The conundrum arises while making the choice between patent and trade secrets. When facing such a confusion, one must ask oneself whether invention is patentable at all? Does it meet legal requirements of novelty, non-obviousness and usefulness to be granted a patent, or not?
The paramount point of trade secrets is that the information pertaining is not supposed to be disclosed in general public. A well-kept secret could theoretically last forever, but there is a risk. Unlike with the patents, it is perfectly legal to reverse engineer and reproduce a trade secret. The non-disclosure requirement of the trade secrets in the public gives its holder the advantage of earning an economic advantage from it. However, it is not mandatory to keep the information a secret for a lifetime. When the trade secret loses it economic value or protection, it can be made accessible to public. Trade secrets protect owner’s secret from theft, by helping the trade secret owner to keep the information a secret, making it highly confidential information. Trade secrets can be patented by its owners at that point of time, when it is no longer in a need of being kept confidential. Patents, in contrast, can only be protected through public disclosure. Patent right is granted to its inventors under the Patent Act, 1970, in order to disclose their invention to the public in exchange for certain rights under the Patent Act. In fact, a patent will be invalidated if the inventor refrains from describing important details. Patents tend to protect the broad concept, while trade secrets can be used to protect details of product or process.
When it comes to patenting technical innovations, there is a need for the innovation to satisfy the requirements of novelty, utility, inventive step and patentable subject matter and commercial usage. However, unlike patents, trade secrets have no such specified criteria and there is no such examination process to test trade secrets. In case of patents, one of the biggest hurdle is the “subject matter eligibility”. The Act lists down certain subject matter that are not patentable subject matter, whereas no such inhibition with trade secrets. A trade secret can relate to anything, provided the owner keeps it as a secret, tending to offer some competitive edge and economic value. Claims in patents define patent protection, however in trade secret there is no such drafting needs. The underlying need of the patent system is for the patent owner to disclose the invention in the patent application, which opposes the requirements of trade secret protection. Even if an infringer independently develops the patented invention, this will not provide any defense for patent infringement. This issue does not apply for trade secrets. The owner of trade secret is powerless to prevent a competitor who chooses to reproduce a product or process that is protected by trade secret by reverse engineering. Hence, trade secret protection is useful against “unfair” users, whereas enforcing patent protection is based on distinct principles of claim infringement.
When it comes to commercialization of invention, the licensing of patented technology is much easier. The technology being licensed is defined precisely and license terms can be set out easily in a license agreement. In case of trade secrets, licensee needs to be satisfied that he/she is receiving a genuine trade secret, not something from public domain, hence there is no clear definition of trade secrets agreement. With respect to licensor’s perspective, any licensee may become a source of “leakage” of the trade secret. Hence, maintain the confidentiality of the trade secret is challenging for the licensee as well as the licensor.
Patents are granted for a tenure of 20 years by Indian Patent Act, 1970. After the expiry of a patent, anyone can commercially exploit the invention. The public might use the inventions for its benefit and the patent holder might not have a right over it anymore. In such cases, trade secrets are way better option than patents, since the term period is never-ending. There is no limitation period for trade secrets, since trade secrets remain confidential until it is transferred to someone. Patents protect the new and innovative inventions of inventors and patent rights ascertains the inventors the protection from other competitors in the market, offers security to inventors and motivates them for more useful innovations. In lieu, trade secrets protect information that doesn’t require to be disclosed to government. Hence, level of protection involved in trade secrets is comparatively less than that of patents. It is tedious to enforce protection of trade secrets as compared to patents.
In addition, the process of getting a patent grant takes time of approximately 3-4 years from the day of filing the patent application. The patent owner can reap the benefits of the patent only after the patent is granted before going through substantial examination and prosecution procedures which typically takes about 3-4 years. Such long time periods serves against the interest of the patent applicant as any other competitor may come up with the similar invention in this time period. However, trade secrets are beneficial in these cases. Trade secrets do not take much time, since after the acknowledgement of trade secrets and maintenance of internal procedures, it becomes a trade secret and gets protection.
Further, the expenses involved in patents are generally more compared to trade secrets. Patents require application fees, filing fees, patent renewal fee so on and so forth till the patent term. The cost may vary from jurisdiction to jurisdiction. In lieu, trade secrets is fairly inexpensive and it primarily includes administration cost for internal processes. Typically, trade secret just requires cost required to maintain its security, giving trade secrets an edge over the patent.
One significant threat to the popularity of trade secrets is the digitisation. With the ongoing data leak, hacking and so on, trade secrets have become more vulnerable than before considering that the onus of protecting the trade secret is on the owner. It is clear from the foregoing, it is clear the patents and trade secrets offer distinct set of advantages. One must use a pragmatic approach before choosing between patents and trade secrets. Ideally, protecting an invention using a combination patents and trade secrets may help one reap the maximum benefits out of them.
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Frivolous Pre-grant oppositions – IPAB’s order provides guidelines on dealing with frivolous pre-grant oppositions
The Patents Act, 1970 provides a provision to oppose a patent filed before the Indian Patent Office (IPO). A patent application filed before the IPO can be opposed by a third person/entity at different stages of patent prosecution. A patent application is usually opposed in two ways, either by a Pre-grant opposition or a Post-grant opposition under Section 25 of The Patents Act, 1970. A Pre-grant opposition, according to Section 25(1) of The Patents Act, 1970, can be filed by any person, in writing, opposing the grant of a patent subsequent the publication of the patent application until the grant of the patent on the grounds disclosed in Section 25(1). A Post-grant opposition on the other hand, according to Section 25(2) of The Patents Act, 1970, can be filed only by a person interested (a person or an entity involved in the same field), only after the grant of the patent and within a year from the date of the grant. Post-grant oppositions are usually filed by competitors or any person involved in the same field since the time frame involved in post-grant opposition is limited and the obligations set by the IPO for filing a post-grant are constrained as compared to the pre-grant, as Section 25(2) clearly mention “person interested”. However, Section 25(1) states that “any person” can file a pre-grant opposition.
Patent oppositions can be greatly used to prevent grant of trivial patents that could become part of patent trolling. However, several a times patent oppositions are exploited in preventing grant of valuable patents thereby impacting competitor’s business. Pre-grant oppositions are ones that have been known to be misused as any person can file a pre-grant and no official fee is involved in filing the pre-grant. A recent IPAB order Novartis vs Respondents (CONTROLLER GENERAL OF PATENTS, DESIGNS AND TRADEMARKS (R1), ASST. CONTROLLER OF PATENTS & DESIGNS (R2), INDIAN PHARMACEUTICAL ALLIANCE (R3), NATCO PHARMA LTD. (R4), KUMAR SUSHOBHAN (R5), DR. REDDY’S LABORATORIES LTD. (R6), HIREN DARJI (R7), G. SRINIVASA RAO (R8)) sheds light on the one of such frivolous pre-grant oppositions.
The above appeal was filed by the appellant against orders passed by R2 during the course of examination of the pending patent application 4412/DELNP/2007 and six pre-grant oppositions filed against it by R3 to R8 under Section 25(1) of The Patents Act, 1970 between the period 26/05/2016 to 18/09/2020.
The main concerns of the appellant were as follows:
- All hearings fixed between 08/01/2020 – 30/10/2020, had been repeatedly adjourned by the opponents, thereby delaying the process of examination and therefore the grant of patent.
- R2 at the command of R3-R7 had adjourned the hearings scheduled between 26/10/2020 – 30/10/2020 indefinitely till physical hearings were possible, as R4 and R6 had expressed “preference” for physical hearing.
- The patent was dated 08/11/2006 and was published under section 11(A) on 24/08/2007. Significant time had passed and even if the patent were to be granted at that point of time, 14 years of patent had already expired.
- Several of the opponents were “benami” and “front men” put by competitors. (The appellant cited reasons for to justify the claim)
The appellant submitted the details and pleaded before the IPAB to dispose the matter at the earliest as the appellant would suffer irreparable injury and the exercise of filing patent application to protect the invention disclosed in good faith would become redundant and meaningless. It was brought to the notice of IPAB that the first pre-grant opposition was filed in 2016 and atleast one pre-grant was filed almost every year thereafter. Furthermore, details of the opponents were highlighted, like R5, R7, R8 not disclosing their qualification or area of business or profession or occupation, and R4 and R6 being members of R3, and also how the oppositions had been avoiding virtual hearings just to delay the process for grant of patent application.
During the hearing, the learned counsel of R4 called attention of the IPAB about certain limitations in hearings through virtual conferencing at IPO that led to them opting for physical hearing, such as restriction of participation of only 4 persons other than Controller and the non-availability of document sharing facilities.
IPAB, considering the details submitted, issued the following directions to dispose the matter at the earliest:
- The Controller to fix up virtual hearings and finish all the pre-grants oppositions within span of 15 days.
- If the Controller had heard existing parties, he shall go ahead with pronouncement of such order.
- The Controller shall consider whether any new ground has been established or any new documents have been relied upon for filing subsequent pre-grant. The e-module shall be suitably modified to annotate as to whether the second/subsequent pre-grant opposition is maintainable or not, in the patent application file, even if maintained electronically.
In addition to the directions, in order to curb the misuse of the pre-grant oppositions, IPAB recommended modifying the E-filing System at IPO to keep check on several points, of which few are discussed below. In light of several cases where pre-grant oppositions have been filed even when there were no patent application pending at the IPO, IPAB recommended modifying the electronic filing module in a way that no such incidences are repeated in the future, by having a validation of the patent against which pre-grant oppositions are filed. In order to curb filing of pre-grant oppositions by “benami” applicants, IPAB recommended that “any person” filing pre-grant must submit his valid Aadhar Card/Voter id Card/ Passport/Driving License to authenticate his identity. IPAB also recommended modifying E-filing System at IPO in a way that, the pre-grant oppositions are rejected when the opponent fails to submit proof of his identity even after given a chance of submitting the same within 15 days from the date of communication. Furthermore, IPAB recommended to update e-module in a way that the Controller can annotate his opinion of refusing or requiring amendment to the patent application, even if such file in maintained electronically.
Patent oppositions, at times, can be misused in preventing or delaying the grant of a competitor’s patents. A patent applicant can only file an infringement case upon the grant of his/her patent, and not before the grant. The competitors may exploit this shortcoming and file for a pre-grant opposition, complying with the rules set by the IPO, to prevent or delay the grant of patents. Filing of such frivolous pre-grant oppositions just to delay the prosecution is an unethical and unfair business practice. The IPO and the IPAB have acknowledged wrongful use of the pre-grant oppositions and have taken measures to curtail repetition of such wrongful acts. Patents give legal rights to its owner to exclude others from making, using, or selling an invention for a limited number of years. Prolonging the prosecution due to the frivolous pre-grant oppositions may be hugely demoralizing to the applicant. It is well known that patents are one among several reasons that promotes innovation because of the incentives that a patent offers. Further, innovation is a key factor in the development of a country’s economy and infrastructure. Therefore, it is pertinent that IPO comes up with measures that keeps the frivolous pre-grant oppositions in check thereby promoting a healthy and competitive patent regime in India.
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COMPULSORY LICENSING AND COVID-19: The Good, the Bad and the Ugly
In our previous article, we talked about the issues surrounding the proposal to waive off IP Rights. The question has the whole world polarised, with opponents asking why waive off IP rights when we have provisions for voluntary and compulsory licensing?
What is compulsory licensing
A patent accords monopoly to the owner to produce and distribute a patented product as they see fit and to keep other parties from doing the same. Compulsory licensing provisions empowers the government to grant such rights to parties other than the patentee, without the consent of the patentee. Alternatively, the government may use the patent itself. All nations that are a party to the TRIPS Agreement are required to provide for compulsory licensing.
The Indian Government can, as per the provisions of the Indian patent Act, revoke patents to meet public interests and even issue compulsory licenses to meet the need of the hour. The Indian Government may also acquire and use patented inventions to address the concerns cited in the proposal.
Keeping in mind the many problems pertaining to production and procurement of vaccines, live-saving COVID-Drugs and medical equipments, proponents argue that the waiver would boost the production of the same.
The apparent GOOD of compulsory licensing
Opponents of the waiver have suggested compulsory licensing as a good measure to solve all problems of manufacturing, procurement and distribution of COVID-19 vaccines, drugs and medical equipment.
It is argued that instead of revoking the rights of the pharmaceutical corporations all together, the rights may be temporarily “shared” to meet the current global requirements. And it does seem to be a win-win situation for all involved – stakeholders’ interests are protected by not depriving them of rights that they have put substantial money and effort into’ whereas the public health is safeguarded by ensuring increased production and supply of the required vaccines, etc., by allowing other parties to take part in the supply and production chain.
While the public health and safety is of utmost concern at the moment, it becomes imperative to safeguard the interests of the pharmaceutical industries. The Covid-19 vaccines and the mutations are being continuously studied presently. Depending on possible future variations, vaccine compositions may have to be altered to increase efficacy. All of this requires substantial investments in terms of R&D. Deprive the ones conducting these R&D from the benefits (namely patent rights) and it definitely affects how they decide to proceed with the on going research.
Why compulsory licensing may be a BAD idea
Compulsory licensing, while seemingly the ideal concept on paper, has its own flaws when executed as a tool.
Issuing compulsory licenses would only be feasible if the government has a generic producer ready to manufacture sufficient quantities of generics. Such a producer must be technologically equipped to quickly make cost-efficient alternatives. If the manufacturer cannot meet the requirements efficiently, the compulsory license stands squandered. Most developing members and the LDCs backing the waiver lack the necessary technology and technological know-how to take up vaccine and other drugs productions.
It is imperative to note that India is not the only country seeking such a waiver. Therefore, the constant arguments that India can resort to acquisition of patent rights or issue compulsory licensing, while logical, aren’t necessarily practical in view of the backing of the waiver by over 120 nations, many of which lack the facilities to set up production units if compulsory licensing plays out.
Another setback of compulsory licensing is protection of trade secrets. As per Article 39 of the TRIPS agreements, members are required to protect trade secrets “against unfair commercial use.” Even if compulsory licenses were to be issued, trade secrets would still have to be protected. Often, trade secrets include data which are crucial for quickly reverse engineering and producing the emergency health and medicinal products that are presently required.
Further, the proponents argue that the process of compulsory licensing is complicated.
The UGLY Truth
The developed countries, most of which initially opposed the waiver, look down on compulsory licensing.
In fact, many countries who were staunch opponents of compulsory licensing have changed their stance and have resorted to compulsory licensing to address the current needs. Other domestic legislative measures have been taken for the same. One wonders why.
In all essence, it boils down to voluntary/compulsory licensing vs total waiver of IP rights (albeit temporarily). Those opposing the waiver suggest that the already-present provisions of licensing are the right alternative. However, those backing the waiver have their reservations about licensing and presently, these reservations seem to be very sensible. Firstly, not all nations have the capacity to enter production to meet the needs, should licenses be issued. Further, in-license restrictions and drawbacks such as high royalties, limitations on the number of products/doses, etc. will continue to thwart the principal objective of the waiver, which is rapid production of large number of vaccine doses and other life-saving drugs within a short span to meet the global requirement.
It is still not clear how the members are going to arrive at an agreement, if they arrive at an agreement at all.
WTO decisions are almost always made unanimously. A TRIPS waiver would require the 3/4th consensus.
Further, while the reasoning behind the coalition’s move to waive off IP rights is understood and appreciated, the question still remains of the effectiveness of such a decision.
A waiver of IP rights would allow generic producers to obtain patented tech and know-how to create cheaper vaccines and drugs to meet the surging needs as soon as possible. However, it would definitely set back big pharmaceutical corporations from investing in future R&Ds, fearing similar outcomes. Alternatively, the corporations may try and set back such “losses” through pricing changes in other non-covid drugs and equipments.
Setting aside the move for waiver would save interests of small number of big corporations but affect the public at large adversely. In any event, either decision would be a double-edged sword.
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Interpretation of Section 3 (e) and Significance of synergistic data
Section 3 of the Indian Patent Act discloses non patentable subject matters, which are not considered as invention as per Indian patent law. Section 3 (e) prohibits patenting of substances that are obtained just by mixing known ingredients or components, such substances comprising properties that is result of aggregation of such components. However, the Manual of Patent office Practice and Procedure holds that all the substances which are produced by mixing components or a process of producing such substances should satisfy the requirement of synergistic effect in order to be patentable.
The Guidelines for examination of patent applications in the field of Pharmaceuticals provides insight that “if the functional interaction between the features achieves a combined technical effect which is greater than the sum of the technical effects of the individual features, it indicates that such a composition is more than a mere aggregation of the features” and does not fall within the ambit of mere aggregation of features. In other words, the claimed invention exhibits synergistic effect.
Synergistic data plays a pivotal role in grant of patents
Section 3 (e) objections are raised mostly in chemical and biotechnological fields. Generally such objections are raised when the invention relates to claims comprising more than one component. The burden lies on the Applicant to provide such data to overcome the objection. Many patent applications have been rightly rejected by the Indian Patent office due to failure to produce such data in support of the claimed subject matter.
Alternatively, there have been instances where a grant of a patent application has been rejected objecting that the claimed invention fails to provide data for synergistic effect, although the description section of the patent application explicitly discloses such data. In this context, it worth mentioning a recent judgement passed by IPAB in favour of the Appellant (Willowood Chemicals Private Limited).The IPAB set aside the impugned order of the Respondent (Assistant Controller of Patents & Designs) against the Appellant and granted a patent to the Appellant stating that the complete specification discloses synergistic data. The Respondent made an erroneous decision ignoring the data provided in the complete specification and raised objection under (e), even though data for synergistic effect was disclosed.
Revocation of patent u/s 3(e)
Mere statement claiming the claimed invention shows synergistic effect would not suffice, the burden lies on the applicant to provide comparative analysis of data relating to individual and combined results. Lack of synergistic data in support of claimed invention may also lead to revocation of a granted patent. A patent granted to Troikaa Pharmaceuticals (IN231479) entitled “injectable preparations of Diclofenac and its pharmaceutically acceptable salts” was revoked u/s 3(e) and lack of inventive step. The patent office during the examination of the patent application failed to raise objection u/s 3(e) and granted a patent to Troikaa Pharmaceuticals. A post grant opposition was filed by “LINCOLN PHARMACEUTICALS LTD (opponent) against the granted patent. The opposition board later found that no data showing the synergistic effect was furnished by the Patentee. Excerpts from the order:
“Thus, from the above findings, it is clear that the composition of the impugned application under opposition does not must meet the above requirements that the composition is a not mere admixture and has the synergistic effect. Explicitly, the composition must noticeably show synergistic effect in respect of ‘reduction of pain’ as the same has claimed to address the said problem. However, there is no data provided in the specification which proving that there is a reduction in pain at the site of injection. In fact, not a single example provided in the composition which could prove there is reduction in pain while injecting. No clinical data of the claimed formulations is presented in the complete specification to show less pain when increased therapeutic dose of 75mg in l ml is used over the prior art diclofenac injections.”
Conclusion:
Inclusion of section 3 (e) in the Patent regime is to prevent ever greening of patents. The Applicant should take due care while filing for patents that may attract section 3(e). It is advisable to include data pertaining to synergistic effect in the patent application at the time of filing the application. Such data may also be submitted during the prosecution stage in the form of affidavit.
On the other hand, the Patent office should also take utmost care, while examining such applications as any erroneous decision or negligence during the examination of the patent application may have a negative impact on the Applicant. The Applicant may have to incur unwanted expenses (example – litigation), which could have been averted, if the patent applications were examined scrupulously. Previously, the Applicant had an option to appeal to the IPAB against the order passed by the Indian Patent Office. However, after the dissolution of the IPAB recently, Applicant now has to file an appeal in the High Court against any decision which conflicts the Applicant’s interest. As a result, the High Courts will be overloaded with the increase in number of cases. Time factor i.e. the prolonged litigation process that provides limited period of monopoly for patents and high expense involved in the litigation may demotivate the Applicant to file for Patent in India, which may indirectly hamper the patent filings in India.
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A Convergence of Trade Names and Trade Marks: A Case Comment
Finalising a name for a company is often a strenuous task, with personal preferences clashing with market perception analysis, existing brand names, statutory requirements, etc. Selecting a name for your product is generally further simplified when one believes in creating a brand of products under one company, thereby utilising the company’s name in the name of the product.
In most instances, where companies tend to use the same name for both their trade name as well as their trademark, the line tends to be blurred when it comes to an infringement action, as is the case in N Dinesh Kumar v. Shweta Khandelwal.[1]
To understand the question that arose in the suit, it would be wise to understand how the law views these two concepts differently.
The Distinction between Trade Name and Trademark
A trade name is quite simply the name the company trades in or does business in, and in most cases this is the corporate name of the company, whereas the trademark is how the company wishes to establish itself in the market as, and how it would like the consumer to identify its products as such. At times, the trade name can be incorporated within the trademark, but when companies look to diversify into different products, the trademark may exist de hors the trade name.
The more important distinction lies in how the law treats the two concepts, and that brings us to the Trademark Act, 1999 (“the Act”). Infringement actions for a registered trademark lie under Sections 29(1), 29(2) and 29(4), with sub-sections (1) and (2) pertaining to similar goods or services and sub-section (4) pertaining to dissimilar goods or services. The standards for evaluating an infringement action in such cases involves evaluating the similarity between the marks, as well as the similarity between the goods or services[2]. In the latter case, the evaluation utilizes the reputation that the registered trademark has garnered, as an evaluation of the similarity of goods or services would not render a result.
However, Section 29(5) is slightly more nuanced, in the sense that the range of infringement is narrower. A registered trademark is infringed when an unauthorized user uses the registered trademark as his trade name or part of his trade name, or as his business concern or part of his business concern. In such cases, the standard for evaluation of an infringement action involves identifying the part of the trade name containing the registered trademark, as well as that the infringer is dealing in the same goods or services that the mark is registered in[3].
The line of differentiation here is that there is no question about similarity or dissimilarity of goods or services. An action under Section 29(5) requires that the alleged infringer deals only in those goods or services for which the registered trademark is registered in.
The Facts of the Case
The facts of the Karnataka High Court decision merit a summary. The suit was filed by the Respondent, the proprietor of the mark Matru Ayurveda and trading as Matru Herbals, against the Appellant, the proprietor of the mark Matruveda and trading as Matruveda Herbals. The Respondent’s device, Matru Ayurveda (TM Appn. No. 3063975), has been registered in Class 3 for a number of herbal cosmetics, while the Appellant’s device, Matruveda (TM Appn. No. 3806687), has been registered in Class 5 for herbal supplements.
The suit at hand involved a claim that the trademark of the Appellant was so deceptively similar that despite having been established earlier, the sales of the Respondent have been impacted by the actions of the Appellant. The trial court, upon an application by the Respondent, granted an order of temporary injunction against the Appellant restraining the Appellant’s use of the mark from infringing the trademark of the Respondent, as well as quite curiously the trade name of the Respondent.
While the trade name may be included within the registered trademark, what Section 29(5) clearly talks about is infringement of a trademark by a trade name, and not the infringement of a trade name. In the present case, the Respondent’s claims have been focused on the loss of business owing to the products sold by the Appellant, and has never questioned the aspect of the Appellant trading in a name incorporating the trademark of the Respondent. Which is what the High Court took note of in its judgment.
The Holding of the High Court
The High Court took special notice of the portion of the judgement where the trial court states “On perusal of the tradename of the plaintiff and defendant, it appears that both the marks are phonetically and deceptively similar”, and pointed out that in this case, as the trade names are contained within the composite mark, the question falls to infringement of the trademark, which therefore involves the evaluation from the eyes of a ‘quintessential common man’ having the ‘wisdom of Solomon’ and the ‘trained eyes of Sherlock Holmes’.
The High Court also observed that where an element appears to be used by other proprietors dealing in other products in the market, the evaluation of the device marks must then turn to the unique features of the respective device marks, to ascertain whether those unique features then become deceptively similar, as purchasers would turn to those unique features to distinguish the mark from others. This principle is dependent on the existence of such a commonality in the market being proved to the satisfaction of the court. The Court thus set aside the order of temporary injunction and ordered a fresh hearing of the matter by the trial court.
Conclusion
What thus stands is but the foundation of device marks and their essential characteristics. As the courts have stated previously, device marks carry the weight of their registration in their appearance, as an average common man having an imperfect recollection looks to the overall design and scheme of the mark when differentiating between products.
The question of trade names thus does not arise when the action lies with respect to an infringement of the mark as a whole, and in this case, it would seem that the requirements of Section 29(5) are not attracted, owing to the registration of the marks in different classes, and dealing with different products.
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[1] M. F. A. No. 790/2021 (Kar)
Patenting life forms in India – Challenges and Scope
A life form could be a unit or a being that is alive in nature. As an example, it may be anything from plant or an animal or a virus to a human being. This provokes a question whether living beings can be patented?
The Indian government’s stance on patenting life forms has gradually changed over time. Couple of decades earlier, India was against granting patents to life forms. The same is apparent based on India’s demand on review of Article 27.3 of TRIPS and support for the African group proposal on review of Article 27.3 presented in 1999, which suggested that patents on life should be prohibited, including those on microbiological processes. However, TRIPS had directed the member countries to allow patents to all technologies and microorganisms as well. To comply with the direction of TRIPS, amendments to the Indian Patents Act, 1970 were made between the years 1999-2005 in order to suit India’s international commitments under TRIPS. Particularly, an amendment to the Act was made in the year 2002 which allowed patents on microorganism. The amendment opened up new possibilities to secure patent rights for new microorganisms and other areas involving microorganisms.
In order to patent a living form in India, the invention must meet the requirements stipulated by the Act. The requirements include sufficient disclosure of the invention, the invention is new, non-obvious and useful, the invention meets the vendibility test, and the invention is in the public interest. Since, the Patents Act does not grant patent for the discovery of “any living thing or non-living substance occurring in nature,” the product or process that is to be patented is ought to be secluded from nature by application of human intervention.
The judgment by the Calcutta High court in the case Dimminaco A G v/s Controller of Patent Designs & Ors” on January 2001 completely flipped the panorama of patenting life forms in India. Dimminaco A G, a Swiss company approached the Hon’ble High Court of Calcutta upon getting a refusal on its process patent that pertained to preparation of a live vaccine for Bursitis. The company got denial on the grounds that, the invention containing a living organism was not patentable as under section 2(1)(j). The Controller of Patents determined that the process was not an invention, since the end product produced by the corresponding process contained a living organism, thereby making it not patentable. On the contrary, the High Court applied the vendibility test to the invention and deemed that the process results in a vendible item that is new and useful. Since the process resulted in a vendible item, patent was granted for the process and there was no discussion about the end product containing living material in reaching this conclusion. The conclusion which could be drawn from the instant case is that, patent rights are granted to a process rather than a product provided that the product produced using the process is a vendible item.
Further, the Act was amended in the year 2002, to include Section 3(j) which does not allow patenting biological processes for production of plants and animals, or plants and animals in whole or in part other than microorganisms. This amendment opened gates for patenting living forms (microorganisms) and not just the processes of producing the life form. It is still uncertain how far Section 3(j) would aid in patenting of microorganisms as there is an ambiguity in defining what constitutes a microorganism. Therefore, it is vital to have a clear working definition for “microorganism” as a legislative amendment in India.
However, there is a clarity in the matter of patenting Genetically Modified Organisms (GMOs). GMOs are also categorized under life forms, and even though GMOs are living beings, they do not occur naturally in nature. A significant human intervention is necessary for the development of GMOs. Hence, the Act provides more leeway for patenting GMOs.
It is to be noted that biotech companies make huge investments in the research and development to come with new improved microorganisms. Considering the huge money that is invested and the risk that is taken by these companies it is virtuous that these companies are rewarded for their work. Denying patents for microorganisms that are developed as a result of intensive research and huge investment is highly demoralizing to the companies. It is also to be considered that genetic engineering and biotechnology is an important player in the development of a country. The developed nations such as USA, Japan and European countries recognized this and have framed the legislation that makes it easier to patent life forms. The Indian government over the time has made necessary amendments to address the issues surrounding the patenting of life forms. However, it is not sufficient and there is scope for improvement. Considering all of the above, it is imperative for the Indian government to come up with legislation to clear the ambiguities clouding the patenting of life forms.
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TRIPS IP waiver: One country’s meat is a pharmaceutical corporation’s poison
The Issue
The debate between promoting commercial interests of patent holders and protecting the public health and interest has been long-standing. The present-day pandemic has brought states and pharma-companies at loggerheads, adding issues and arguments to the long-standing question about the balance between the commercial interests and public health.
When it comes to IP, specifically pharmaceutical patents, activists have urged that The IP rules and laws need to be relaxed in light of public interests, especially in third-world and developing countries where access to cheap drugs is often problematic. Au contraire, capitalists would argue that IP rights are necessary to protect the interests of the drugmakers – to incentivize their time spent and investment made in coming up with ground-breaking yet essential medicines and medical equipments.
The present pandemic has blown this debate into new proportions, bringing nations together, against others, in a move to waive off IP rights, albeit temporarily, for vaccines and other drugs essential for the global fight against COVID-19.
Introduction and Reception of the Proposal for Waiver
On October 02, 2020, India and South Africa approached the WTO TRIPS Council with a proposal with a request for a “a waiver from the implementation, application and enforcement of Sections 1, 4, 5, and 7 of Part II of the TRIPS Agreement in relation to prevention, containment or treatment of COVID-19.” The proposal also outlined a draft decision for the WTO General Council.
The Council convened in October 2020 to discuss, inter alia, the joint proposal. Kenya and a number of developing countries and LDCs backed the joint proposal. The same was met with strong opposition and criticism by EU, US, Switzerland, and Japan among others. Surprisingly, Brazil also opposed the waiver of IP rights. Later that month, the WTO extended its support to the waiver.
In May 2021, the present US Trade Representative, Katherine Tai, issued a brief statement which spoke about the US’s change in stance in support of the waiver. Following this, the European Union said it is open to negotiations. While Germany continues to push back against the waiver, some other WTO members remain skeptical.
In May 2020, coalition of countries requesting the waiver submitted a revised proposal. The contents were more or less the same as the first, specifying that the waiver would be in force for three years (with an opportunity for extension) and would apply to pandemic-related health products and technologies.
On June 08, 2021, the World Bank opposed the proposed waiver, on grounds that such a move would hamper innovation in the pharmaceuticals sector. Meanwhile, in Geneva, negotiations over revised waiver proposals from India and South Africa are in process.
Why the Request for Waiver?
The members adhering to the TRIPS agreement are committed to guarantee, among other things, a 20-year safeguard for patent rights. The countries supporting the waiver (the Proponents) argue that these stipulations are preventing increase in production of vaccine and other medical products, by limiting the access of the know-how to patentees and their licensees.
The proposal for the waiver emphasized that the rapid development in drugs and vaccines for COVID-19 related concerns brought with it concerns as to the affordability and the availability of the same. While most nations have outsourced medical products to satisfy the surging demands, other have taken to domestic manufacturing of the same.
However, the import-export requirements under Article 31 proves to be taxing and cumbersome for countries who have no manufacturing capacity and have to resort to importing the medical products, whereas, domestic production has been seeing many hindrances, especially those in the form of patent rights.
The proponents have argued that voluntary licensing is an insufficient measure since, quite naturally, for financial and other reasons, pharmaceutical bigheads would prefer to tie-up with other giants (mostly in the developed countries). This further leads us to the issue of “vaccine nationalism” where wealthy nations have purchased a significant future supply of the vaccines from the limited COVID-19 vaccine producers, thereby leaving the well dry for the developing countries and the LDCs. This means that unless the remaining countries get rights to produce generics, total global vaccination in the near future is impossible.
Why are Nations Opposing the Waiver?
The Opponents argue that the waiver will not lead to significant improvement, but rather, disincentivise pharmaceutical companies from investing in future R&D, and let’s face it, they do invest a lot in R&D.
Vaccine makers and pharmaceutical industries argue that this move will not solve the problems of vaccine shortage since other factors, such as trade barriers, shortages of components and raw material supplies, lack of manufacturing capabilities, and lack of infrastructure would still hamper vaccine production and supply.
The countries backing the waiver are mostly developing countries or LDCs and have little or no capacity to take up vaccines/drugs/equipment productions. While some lack the technology, other lack raw materials, and some did not have access to both.
Ironically, some the opponents to the waiver are also the biggest “hoarders” of the vaccines and life-saving drugs which are already in short supply. World Bank President, David Malpass, reiterated his calls for the developed countries to donate their excess vaccine doses to the developing countries. Even though international collaboration and effort put COVAX in the playing field to ensure equitable vaccine distribution, donation of doses to COVAX still fall short of the required number, prompting countries to back the waiver.
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Compulsory licensing – a panacea for controlling covid-19?
The on-going Covid-19 pandemic has taken a massive toll on the healthcare sector. The situation is dire in India with has led the Supreme Court of India to declare the second wave as a national emergency. In addition to the rampant increase in COVID cases, the non-availability of medicines such as Remdesivir, Tocilizumab and Favipiravir at sufficient quantities has exacerbated the situation. One of the reasons for lack of affordability and availability of these drugs is that such drugs are patent protected, which provides monopoly rights to the patent owner. In such scenarios, compulsory licensing can play a pivotal role in increasing the availability of the patented drugs.
What is Compulsory licensing?
Compulsory licensing refers to licensing of a patented invention by the government to a third party without the authorization or consent of a patent holder.
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PROS |
CONS |
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The patented drug is easily made available to the public. |
The royalty paid to the innovative company may be lesser than the expense incurred in the research and development of the drug. |
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The patented drug will be available to the public at cheaper price. |
Deterrent to innovation as the monopoly of the patentee over the patent is suspended. |
Compulsory licensing is not a new concept, it is widely recognized in both international and national domains. Paragraph 5 of the Doha declaration and Article 31 of the TRIPS Agreement sets forth a number of conditions for the granting of compulsory licences.
The Indian Patents Act vests special power on the central government u/s 92, under which the central government can invoke compulsory licensing under certain circumstances such as a) national emergency or b) extreme urgency c) public non-commercial use. Section 100 of the Indian Patent Act also empowers the Central Government and any person authorised in writing may use the patented invention for the purpose of the government. The Patent Act also empowers the government to acquire the invention for which an application for patent has been filed or a patent has been granted for public purpose (u/s102). The intention behind vesting such powers on the government is to safeguard public life.
On 20th April 2021, the Supreme Court of India has declared the crisis triggered by the second wave of the Coronavirus as “national emergency”. The Supreme Court has also asked the Central government to consider invoking powers vested under section 92, to hoist the availability of COVID -19 related drugs. Even the Delhi High court has directed the Central government amidst of national emergency to utilise the power vested on the government under section 92 of the Indian Patent Act. Then, why is the government not invoking compulsory license? Considering the on-going pandemic, the need of the hour is to invoke compulsory licensing to combat the deadliest effect of the virus. Every minute, hundreds of people are losing their lives, due to non-availability of the drugs that are useful to treat the infection. It is not the first time that the India is enacting the provision of compulsory licensing. Previously, a compulsory license was granted to NATCO (here) to produce and market Nexavar, an anticancer drug on which Bayer’s holds a patent. The grant of the compulsory license to NATCO clarifies that India is not a new player in this field.
Moreover, the inclusion of compulsory licensing in the Indian patent regime clearly states that when such a pandemic situation arises and the government has to decide whether to preserve the rights of the patentee or give priority to public life, the government has to prioritise public life over the rights of the patentee. The inclusion of such provision in the Patent act is not to exploit the patent rights of a patentee, but to safeguard the public interest and life, as the sole aim of the issuance of compulsory licensee is to address the public health problems. Even the Doha declaration (Paragraphs 4 – 6) on TRIPS agreement and Public health affirmed the flexibility of TRIPS member states in circumventing patent rights for easy access of the medicines or drugs to the public, by invoking compulsory license. Further, compulsory license invoked under such circumstances is provided only for certain periods that is to say -till the national urgency or extreme urgency ceases to occur. The government also pays royalty to the patent holder on usage of the technology invented by the patentee.
Compulsory licensing may not be the panacea for the ongoing crisis. Compulsory licensing of the drugs used to treat COVID may aid in increasing the production of the drugs by third party entities. It shall be noted that a company from Bangladesh produced the world’s first generic Remdesivir without obtaining a license from the patentee Gilead sciences. On the other hand, compulsory licensing may not be effective in the case of vaccines. Typically, pharmaceutical companies protect vaccines using a combination of trade secrets and patents. Therefore, obtaining a compulsory license is not enough for a third-party entity to produce vaccines as some of the crucial information related to the production of vaccines may be protected as trade secrets. Compulsory license is a good step but is not the only step. The government should bring together the stakeholders and device a strategy to address the hindrances to the production of vaccines by third party entities without drastically affecting the interests of the patentee.
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Curtains for the Intellectual Property Appellate Board (IPAB) – End of a possible game changer?
The Intellectual Property Appellate Board (IPAB) was established by the Indian Government as an Appellate body on 15th of September 2003 for hearing and resolving appeals against registrar under the Indian Trademarks Act, 1999 and the Indian Geographical Indications of Goods Act, 1999. Later on, from the 2nd of April 2007, IPAB was further authorized to hear and resolve appeals for the orders and decisions made by the Patent Controller under the Patents Act, thereby transferring the powers of High court under the Patents Act and the Copyright Board. With this, the cases relating to patents pending before the High Court were transferred to IPAB.
The idea of having an Appellate Board appeared to lessen the burden of the High Courts. However, the orders passed by the IPAB could be challenged before the High Courts, and then the Supreme Court in cases where High Court orders had to be challenged leading to a very exhaustive prosecution process. To alleviate this, on December 06, 2019, the Ministry of Commerce and Industry in its press release stated that “The applicants of all Intellectual Property Rights (IPRs) can directly file Special Leave Petition (SLP) before the Hon’ble Supreme Court against any order of Intellectual Property Appellate Board (IPAB)” implying that the appeals against the IPAB orders could be directly filed before the Supreme Court. This meant that the appeals could now be directly filed in the Supreme Court against orders from the IPAB, without first approaching the High Court. The Ministry of Commerce and Industry was in favor of the IPAB and affirmed the importance of IPAB with the press release.
IPAB, since its inception has been greatly criticized because of its underworking. Several reasons that have plagued the working of the IPAB have been constant, the reasons being delay in appointment of members and Chairpersons to the IPAB, questions as to their technical qualifications and pending of appointments with regard to technical members, which led to delay in disposing cases. This lack of basic infrastructure and lack of technical appointments to the IPAB added to the concerns of IPAB, which in recent years were resolved to an extent.
The inefficiency of the IPAB led to majority of stakeholders, including a former chairperson of the IPAB, Justice Prabha Sridevan favoring its shutting down. Recently, the Union Finance Minister introduced a draft bill in the Lok Sabha with the proposal of shutting down IPAB and transferring the powers of IPAB back to the High Courts, following which on the 4th of April 2021, The President of India promulgated the Tribunal Reforms Ordinance thereby putting an end to the IPAB.
With the promulgation of the Tribunal Reforms Ordinance, certain appellate bodies were shut down and their functions were transferred to existing judicial bodies. With the shutting down of the IPAB, the cases would now be transferred back to the High Courts, which are already overburdened with the pending civil cases. It is to be noted that the High Courts have more than 55 lakh pending cases as of April 2021. In addition, even the High Courts are operating underpowered with more than 400 vacancies for the Judges to be filled. Bringing patents under the regular court system may result in prolonged litigation which would hamper the patent rights, given the limited period of monopoly for patents, further it would also over-burden the High Courts. This problem is not faced by the likes of trademarks and copyrights, where in the former registration may be prolonged continuously, while in the latter the scope of protection is sufficiently longer to accommodate litigation. One of the other reasons that was given for shutting down of the IPAB was the economics, as a lot of funding was spent on the IPAB over its lifetime as opposed to its generation of limited revenue, considering which shutting down of the IPAB seemed more appropriate.
It shall be noted that each bench of IPAB included a Technical member along with a Judicial member as per section 116 of the Patents Act, who would be a vital player in patent hearings, which is currently missing in the case of High Courts. The Judges appointed in the High Courts mainly hold a degree in Law and have little exposure in the field of science, thereby demanding an additional technical member during hearing of the patent appeals. An additional requirement implies hiring of new technical members fulfilling the requirements of the High Courts for hearing patent appeals, which would basically contradict the very reason provided for disposing the IPAB in the first place. With the shutting down of the IPAB, we need to see how the transfer of cases and their proceedings are carried out and also on how things pan out in the future.
With the increase in IPR awareness and proposed policy changes to promote IPR, one can expect a substantial increase in filings, examinations, appeals and so on. Given this, a fully functional IPAB would have helped in expediting matters related to not just Patents, but also Copyrights, Trademarks and Geographical Indications. Overlooking the shortcomings of the IPAB till date, if the IPAB was to be endowed with most of its requirements for its full functionality, could the IPAB play a major role in the field of Intellectual Property, especially patents? The abolishment of the IPAB at a time when there is an increased interest in Intellectual Property Rights may not be a wise decision. It is a view of majority of stakeholders that the IPAB be reinstated which would in turn aid in uplifting India’s IP landscape, in an era where Intellectual Property rights is given utmost importance.
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