Copyright infringement vs public access to knowledge – The SciHub case
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Background of the Case
The Plaintiffs briefly are three large publication houses, specifically in the realm of scientific or technical journals. These houses publish a staggering number of articles per year, and charge readers for access to view the same articles. As scientific research is heavily dependent on review of existing literature, one could argue that these companies play a very pivotal role in the development of scientific acumen.
The Defendants, on the other hand, are public websites offering viewers with the ability to access articles held behind a paywall, for free. These websites provide free access to paid articles either by hosting the articles themselves, or by providing a catalogue of links directed towards websites containing free copies of the articles.
The Plaintiffs have alleged that the Defendants effectively have been serial offenders of copyright law, by continuing to make copyrighted material available without the requisite license from the copyright holder (aka the Plaintiffs) and have been infringing their rights under copyright law. They also allege that the Defendants have gone about this infringement by making a number of domains and mirror sites, to circumvent court orders issued in other countries. In light of the same, the Plaintiffs are seeking a dynamic injunction against the Defendants. In a nutshell, a dynamic injunction is an injunction granted against a party extending to all websites that appear to be similar to the infringing website, and perform the same functions that the infringing website performed at the time of granting the injunction. It is a remedy born out of judicial innovation in a prior Delhi High Court case, and reduces the need for an intellectual property holder to constantly approach the courts for injunctions against sister sites of the infringing site.
The Public Interest Angle
Intellectual property on the whole has struggled in achieving a balance between public interest for access to the protected subject matter, and granting economic benefits to the creator for his pains in bringing forth the said creation. Copyright in literature has been at the forefront of this debate, owing to the large public interest invested in its free proliferation.
Protection of public interest in copyright law has found its enactment in the concept of fair use, and in India particularly, in fair dealing. Section 52 of the Copyright Act, 1957 lays down the concept of fair dealing, and consists of an elaborate enumeration of uses that would be permitted under this concept. It would however be possible to argue that the existence of the element of public interest influences the grounds of interpretation of the pigeonholes under Section 52. The case of Rosemant Enterprises Incorporation v. Randon House Incorporation, a US Second Circuit decision, is an interesting read in this light, for the Court in that case found that the defendants, despite unauthorizedly utilising the plaintiff’s biography, had acted in fair use, with the Court stating that “the public interest should prevail over the possible damage to the copyright owner”.
Another interesting note lies in a previous decision by the Delhi High Court in the case of Super Cassettes Industries Ltd. v. Hamar Television Network Pvt. Ltd. The Court, while summarizing the points on “fair dealing” makes a very interesting observation, as provided below:
“Public interest may in certain circumstances be so overwhelming that courts would not refrain from injuncting use of even "leaked information" or even the right to use the "very words" in which the aggrieved person has copyright, as at times, public interest may demand the use of the "very words" to convey the message to public at large. While the courts may desist from granting injunction based on the principle of freedom of expression, this would, however, not necessarily protect the infringer in an action instituted on behalf of the person in whom the copyright vests for damages and claim for an account of profits”
Intriguingly, this point plays a double-edged sword. The Court in the present case may rely on this precedent to hold that an injunction should not be granted, owing to the large public interest in free access to knowledge. However, the Court will then have to call for damages to be awarded to the Plaintiffs for the infringement of their work. The Defendants do not commercialise their efforts, and therefore the question of calling for account of profits does not arise. The Court would then have to decide a particular amount as damages, which requires an economic analysis into the extent of infringement by the Defendants, which only burdens the head that bears the band. Food for thought.
Sparking Research
The next issue that arises is how far the Court is willing to push the envelope when it comes to education and research. Section 52(1)(a)(i) of the Act allows a person to utilize a copyrighted work for private or personal use, including research, and Section 52(1)(i) allows for the reproduction of the work by a teacher or pupil in the course of instruction, and we proceed to examine what this means for the case below.
The Madras High Court in the case of Blackwood and Sons Ltd. v. A. N. Parasuraman held in that case that the defendant’s guides did not constitute works of research, as “private study only covers the case of a student copying out a book for his own use, but not the circulation of copies among other students”. However, the Delhi High Court in the famed The Chancellor, Masters & Scholars of the University of Oxford & Ors. v. Rameshwari Photocopy Services & Ors. case, provided for a different interpretation of the clause, and noted that the protection for an act conducted by a student for his own research would also extend to the same act of a university for reasons of limited days of instruction, preserving the book against damage from repeated photocopying, and so on.
The takeaway from this would then be that the university, acting as a facilitator for research, was protected under the concept of fair dealing of private research. One might then say that the Defendants, also acting as facilitators for private research, are providing access to universities and students who would otherwise be unable to access the same owing to the exorbitant fees being charged by the Plaintiffs.
One might even extend the same logic to the clause for educational instruction. Due to the expansive interpretation given by the Court in the aforementioned case, the phrase ‘in the course of instruction’ extends to acts outside the classroom, and one would find it hard to believe that it does not cover the acts of the Defendants, as students and faculty often rely on the Defendants’ resources to improve the quality of their assignments and pedagogy respectively.
Conclusion
The facts at hand prove to lean in favour of the Defendants, especially given that the High Court has further agreed to hear researcher collectives and student organizations as well. We might even see a repeat of the circumstances in the DU Photocopy case, with overwhelming social pressure petitioning the Plaintiffs to drop their suit. The case would however hinge on the stance the Court would take as to the position the Defendants play in the role of access to knowledge, rather than the content and qualitative use of the Plaintiffs’ copyrighted work. To students and researchers alike, the Defendants don the shining mantle of a knight, while to the publishers plying their trade, a bibliophilic Robin Hood, the scourge of their operation. To the author, a recent graduate now working in the field of intellectual property, a turgid conundrum sure to cause him a few sleepless nights.
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Philips moves Delhi High Court against Xiaomi and Vivo over patent infringement
Philips has moved the Delhi High Court over patent infringement against two Tech giants, Xiaomi and Vivo. Philips in its suits claims that the two mobile manufactures have violated its "Standard Essential Patents". The patents relate to “UMTS enhancement (HSPA, HSPA+) and LTE technologies” in the telecommunication technologies.
In one of its suits against Xiaomi, the Plaintiff have sought the following:
- Restraint against manufacturing/assembling, importing, selling and advertising of certain smartphones that infringe the Plaintiff’s patents.
- Injunction has been sought to direct the Central Board of Excise and Customs to issue appropriate instructions to custom authorities to restrict the import of mobile handsets that infringe the Plaintiff’s patents.
- Quantum of mobile phones and any other devices sold till date that are UMTS, HSPA, HSPA+ or LTE compliant.
- Revenue earned from the sale of such devices for every quarter.
- Safeguarding the Plaintiff's rights and interest and secure recovery of amounts for past infringing activities of the Defendant.
A single bench of Justice V. Kameswar Rao directed the defendant to maintain an amount of Rs 1000 crores in their bank account operated in India and submit details of the bank accounts operated in India.
The advocate representing the defendants accepted the notice for the defendants and has taken on record that, till the next date of hearing the Defendants shall maintain an amount of Rs 1000 crores in their bank account operated in India. The defendants have also agreed to file the details of the bank accounts operated in India where the said amount is being maintained before December 02, 2020.
Summons are issued to the defendants, and the same are received by the advocate for the defendants. The summons states that a written statement be filed within 30 days from the date of summons.
The hearing of suit against Xiaomi will be on March 01, 2021.
In its suit against Vivo, the Plaintiff has pleas that a direction be issued to not create any encumbrance or third-party rights in its manufacturing plant.
While dealing with the suit against Vivo, a Single Judge Bench of Justice Rajiv Shakdher directed the defendant to not create any encumbrance in its manufacturing plant during the adjudication of the case.
The hearing of suit against Vivo will be on February 10, 2021.
High court order against Vivo: https://images.assettype.com/barandbench/2020-12/7c132206-219b-43ae-a047-82e43136ff40/Philips_v__Vivo___383___Order_dt__17_11_2020.pdf
High court order against Xiaomi:
http://delhihighcourt.nic.in/dhcqrydisp_o.asp?pn=220558&yr=2020
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USPTO and IMPI announce launch of Parallel Patent Grant Initiative
Earlier this year (January 2020), the Unites States Patents and Trademarks Office (USPTO) and the Mexican Institute of Industrial Policy (IMPI) had signed the signing of a Memorandum of Understanding on Technical and Strategic Collaboration (MoU).
On December 07, 2020, the parties to the MoU announced their decision to launch the Parallel Patent Grant (PPG) initiative under which the IMPI will expedite the grants of Mexican applications whose US counter-parts have already been granted.
This move protects the interests of businesses that have investments in Mexico.
The PPG is a separate initiative from the PPH (Patent Prosecution Highway) which has been implemented by the IMPI and the USPTO since 2011.
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MoU ON BILATERAL CO-OPERATION BETWEEN DPIIT AND USPTO
On December 02, 2020, The Department for Promotion of Industry and Internal Trade (DPIIT), and the United States Patent and Trademark Office (USPTO) signed an MoU to facilitate the exchange and emulation of optimum practices followed by each office.
The key areas or objectives that the MoU seeks to address are, inter alia, Capacity Building, Human Resource Development, Public Awareness Programmes.
The MoU also seeks to promote sharing of experiences and IP knowledge to various sections, individuals and businesses alike, by initiating and promoting participation in programs and events.
The parties will also ensure that there will be collaborative training programmes and outreach activities along with exchange of experts and expert/technical opinions.
The MoU also mentions that the parties will come together to understand the various issues related to traditional knowledge, and the exchange of best practices, including those related to traditional knowledge databases and awareness-raising on the use of existing IP systems for the protection of traditional knowledge.
As per the MoU, the parties will draw up an Annual Action Plan to set out collaborative objectives and activities for each year.
A Joint Consultative Mechanism (JCM) will be set up for drawing the Annual Action Plans and will monitor the activities under the MoU.
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Maharashtra government to provide aid of up to 10 lakh for startups to file patents
While addressing a press conference in Mumbai, Minister of Skill Development, Employment and Entrepreneurship, Mr. Nawab Malik said that a financial assistance of Rs 2 lakh to Rs 10 lakh will be provided for startups that wish to file patents.
''In order to survive in a competitive world, it is important for startups and early-stage entrepreneurs to protect their Intellectual Property Rights (IPR). With the objective of spreading awareness and providing assistance for filing Intellectual Property Rights (IPR) application, this scheme aims to offer financial assistance of up to Rs 2 lakhs for a domestic patent application and up to Rs 10 lakhs for an international patent application, subject to maximum 80% contribution by Maharashtra State Innovation Society set up by the Department of Skill Development, Employment and Entrepreneurship, on a reimbursement basis,'' said Mr. Malik.
The official statement also laid out the eligibility criteria to avail the scheme. The eligibility criteria is as follows:
- The applicant should be a startup recognized by the Department for Promotion of Industry and Internal Trade (DPIIT), Government of India and incorporated in Maharashtra.
- For domestic patent applications, since incorporation, the startup should have a revenue of less than INR 1 crore.
- For international patent applications, since incorporation, the startup should have a revenue of less than Rs 5 crore.
The official statement further added that, in case the startup has raised funds of more than Rs 3 crore, then the contribution from Maharashtra State Innovation Society shall reduce to 50% instead of 80%.
Mr. Malik further added that, ''Maharashtra is one of the first few states to provide an end-to-end platform for IPR applications, in addition to financial assistance. This scheme shall help establish Maharashtra’s position as an IP-led startup hub, playing to our advantage as the country’s most industrialized state. This scheme aims to support approximately 125-150 startups in Maharashtra,''
In the first phase, the scheme aims to provide financial support to about 125-150 startups. This scheme will come as a relief to the startups that cannot afford the huge expenses involved in the patenting process. Once implemented, the scheme could improve the startup ecosystem in Maharashtra which in turn might motivate other states to take similar steps to encourage startups to pursue patents for their innovations.
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WhiteHatJr’s Magical Rabbit: A Perverse Application of Trademark Law
WhiteHatJr’s issues began when Pradeep Poonia began posting tweets and videos on his YouTube channel criticizing both the teaching methods as well as the advertising claims made by WhiteHatJr as being misleading. Aniruddha Malpani posted tweets on similar grounds.
Prior to the institution of the cases and the grant of the ad-interim injunctions, WhiteHatJr targeted Pradeep Poonia’s videos on YouTube under his three accounts: WhiteHatSr, Safed Topi Sr 2 and Pradeep Poonia 3.0. WhiteHat even went after 12-year-old Jihan Haria’s video on YouTube roasting their advertisement, but this copyright “strike” was eventually reversed. Pradeep Poonia’s first two accounts however received multiple strikes, and the third account hangs on its last strike open.
Coming to the crux of the matter, the Delhi High Court however, in both cases, seems to have taken an overall view of the content posted by the defendants, and has evaluated its orders on the basis of the defamatory nature of the content to pass the interim injunctions. Independent IPR enthusiasts and observers therefore have little to peruse and abstract from these decisions as of now, especially since these cases involve the internet’s primary tenet of free speech and fair criticism and the use of Intellectual Property to shut down criticism.
At this stage, it would be prudent to examine the established strongholds of fair comment that IP already provides for, and in this case, what copyright and trademark allow for. Copyright law is fairly certain in its defense of fair comment, for Section 52 (1)(a) of the Copyright Act, 1957 explicitly allows for the reproduction of a work for the purposes of criticism or review. The author therefore fails to see any ground for the copyright strikes against both Pradeep Poonia’s videos as well as Jihan Haria’s videos, and YouTube India would do well to update their copyright infringement systems to sidestep such infructuous claims.
Moving further to trademark law, this is a concept that is fairly new to trademark law in India, witnessed specifically by the lack of a provision speaking to the issue in the Trademark Act, 1999 as well as noticeably few judicial precedents. However, while trademark law does place boundaries on what is considered infringement (under Section 30), it can be argued that it protects fair comment by way of normative fair use under Section 30 (2)(d). Nominative fair use basically allows the use of another’s trademark to refer to the owner’s goods and services. Such use however must comply with three conditions:
- The product or service in question is not readily identifiable without the use of the mark
- Only so much of the mark is used as is reasonably necessary to identify the product or service
- Using the mark does not create an inference of sponsorship or endorsement[1]
Regarding nominative fair use, the Delhi High Court initially dealt with the matter in Hawkins Cookers Ltd. v. Murugan Enterprises. The Single Judge Bench had held that as long as the use was bona fide, was reasonably necessary to show that the goods were adaptable to the proprietor’s products, and did not deceive the public as to the origin of the goods, there was no infringement of the proprietor’s mark. The Division Bench overruled the decision of the Single Judge Bench on merits, holding that the defendant’s use of the plaintiff’s mark was above what was necessary, given the emphasis on the use of the mark “Hawkins” in a red colour font. However, the Court did note that the Single Judge’s appreciation of the law was correct.
The Madras High Court also had the opportunity to deliberate on nominative fair use, in Consim Info Pvt Ltd. v. Google India Pvt. Ltd., and reaffirmed the three factors for nominative fair use stated above. The Court however noted that the respondent’s AdWords policy was discriminative towards the trademarks of the appellant, and therefore as such a policy would cause confusion in the mind of the public as to the appellant’s mark, the Court held such use to be infringing.
The Delhi High Court again, in the case of Prius Auto Industries Ltd. v. Toyota Jidosha Kabushiki Kaisha, dealt with nominative fair use, and while the Single Judge Bench had set aside the injunction restraining the defendants from using the plaintiff’s marks, the Division Bench had, with the parties’ consent, restrained the defendant from using the plaintiff’s marks except for identifying their compatibility with the plaintiff’s cars, that the words “TOYOTA” and “INNOVA” were not written in the same font, and that the words ‘Genuine Accessories’ were used only in relation to the defendant’s name. On a final appeal to the Supreme Court, however, no mention of the nominative fair use doctrine was made, and the issue was determined solely on the basis that the plaintiff (Toyota) had not evidenced sufficient proof of the existence of goodwill over the use of the mark “Prius” in India, and hence, by the territoriality principle, the defendants were not liable for infringement. The decision of the Division Bench regarding the use of the marks “TOYOTA” however were upheld.
Another question that arises is with regards to the manner of infringement. Section 29 of the Trademark Act, 1999 primarily deals with the infringement of the mark by usage in the course of trade, and to determine such usage, circumstances are listed under sub-section (6). The peculiarity here is that none of the circumstances mentioned under (6) provide that the mark is used for criticism. It is therefore hard to see suitable grounds for WhiteHatJr to sustain an action of trademark infringement on the grounds of criticism. The issue of disparagement does not arise, on the basis that neither of the defendants are making such criticism while simultaneously engaging in comparative advertisement. Although Aniruddha may be an investor in other edtech start-ups, she is not criticizing WhiteHatJr while also promoting any of her investments.
In conclusion, there does not appear to be satisfactory grounds for WhiteHatJr to have instituted an action of trademark infringement and disparagement against Pradeep Poonia and Aniruddha Malpani. These actions, quite literally, appear to be a rabbit pulled out of WhiteHatJr’s magician’s hat. The worrisome quandary we now find ourselves in is the overextended use of YouTube’s copyright infringement ‘three strikes’ policy. As on yesterday, December 13, 2020, YouTuber Samuel Miller posted a video wherein he described an instance where he was contacted via Instagram by a person claiming (very unsuccessfully) to be the CEO of WhiteHatJr and threatened to file a copyright infringement claim against Samuel’s video criticizing WhiteHatJr if he failed to transmit 1 bitcoin to the assailant’s address. WhiteHat’s actions to stifle criticism seem to have spurred a new form of ‘copyright trolls’ (the author has very liberally adapted the term ‘patent troll’ to the present context) who threaten to take down videos and ransom the creator’s content to avoid their channel being permanently blocked by YouTube.
It remains to be seen what the courts will tend to make of such criticism in the future. A rather foreboding indicator of what we may see in the future was witnessed in the Pradeep Poonia case, where the Court, in its injunction, prohibited the defendant from using the term WhiteHatSr and WhiteHatPoonia, on the grounds that such names were infringing and would lead to confusion in the minds of the public. What one may hope would constitute fair parody in the means towards criticism has been severely hampered by this decision, and it would appear that a rather unfair boundary has been placed on free speech and fair comment.
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[1] Fair Use of Trademarks (Intended for a non-legal audience), January 31, 2016 https://www.inta.org/fact-sheets/fair-use-of-trademarks-intended-for-a-non-legal-audience/#:~:text=Nominative%20fair%20use%20permits%20use,services%20associated%20with%20the%20mark.&text=Here%2C%20the%20trademark%20is%20used,not%20imply%20sponsorship%20or%20endorsement.
Permissible amendments under section 57 and 59 of the Indian Patent Act
BACKGROUND OF THE CASE
A provisional application entitled “A Process for Manufacturing Isostatic Punch and the Punch Manufactured therefrom” (application number: 1202/MUM/2005) was filed on 27th September 2005, by Prism cement Ltd. (Appellant) for which a complete specification was filed on 27 September 2006. A first examination report (FER) was issued on November 05, 2012 by the Controller of Patents (herein Respondent in this case). The appellant filed a response to the FER on 31st October 2013, with amended set of claims reducing the claim count to 10 from 17. A comparison of the as filed claims and claims amended in the FER response is presented below:
|
As filed claims (independent claim) |
Claims amended in the FER response |
|
Claim 1 |
Claim 1 (amended) |
|
1. A method of manufacturing an isostatic punch comprising of preparing an inbuilt rubber grid tight-fitting in cavity / cavities of a metal base having opening/s to fill in a viscous liquid at the base of the said inbuilt rubber grid and further rubberizing it with layer/s of rubber. |
a. Making a network of two or more interconnected cavities, channels and openings with valves on the metal base; b. Pressing rubber tightly on the said cavity bearing surface of metal base; c. Pressing a rubber layer onto the said cavity bearing surface of metal base having inbuilt rubber grid.
|
|
Claim 11 |
Claim 4 (after amendment) |
|
11. An isostatic punch, comprising of an inbuilt floating rubber grid tight-fitting in one or more cavities of a metal base having opening/s to fill in viscous liquid at the base of the said inbuilt rubber grid and further rubberized with layer/s of rubber. |
4. An isostatic punch, comprising of an inbuilt floating rubber grid tight-fitting in one or more cavities of a metal base having opening/s to fill in viscous liquid at the base of the said inbuilt rubber grid and rubberized with layer/s of rubber. |
The Respondent on 10th February 2015, issued a hearing notice appointing a hearing to be held on 23rd February, 2015. A post hearing written submission was filed on 02 March 2015, with amended set of claims reducing the claims count to 6 from 10 and comprising a single independent claim. The amended independent claim 1 is reproduced below:
1. A method of manufacturing an isostatic punch having cavities of required dimensions connected together with channels on the surface of a base metal plate; oil ports at the bottom of the said base metal plate opening into some of the aforesaid cavities; rubber grid of nearly equal
dimensions as of the cavities and channels placed therein and rubber layer on top of the said base metal plate characterized in that the said method inter alia comprises of the following steps:
a) Making two or more cavities all connected by open channels, on the surface of a base metal plate;
b) Providing oil ports at the bottom of the said base metal plate opening into at least two of the aforesaid cavities and non-return valves, one each at the mouth of the -said oil ports;
c) Applying a mould release solution over the said base metal plate;
d) Rubberizing a first rubber sheet onto the said base metal plate and the said cavities therein;
e) Scraping the excess rubber on the said base metal plate after step (d) above;
f) Shot blasting the base metal plate with the rubber in the cavities, made in step (e) above; and
g) Rubberizing a second rubber sheet on the base metal plate.
Further, a telephonic discussion was also held 07 April 2015 by the respondent for discussion and an impugned order was passed on 18 September 2015 rejecting the grant of the appellant’s patent application. One of the objections raised in the hearing notice is the inclusion of the terms “open channel” and “position of non-return valve” in the claims. Grounds for rejection from the order is produced below:
- New set of claims were filed; which were not submitted in-line with the original filed claims by strictly adhering to section 57/59 of The Patent Act. Claims were filed with form-13. New features added which is added to overcome the cited documents like open channel whereas channel was given in specification only but citation for punch having made from channel to overcome the objection open channel was added whereas open channel was not support in specification. Secondly position of nonreturn valve is defined in step (b) one each at the mouth of the said oil parts. Where as in specification shows non-return valve are placed at the base of the cavity which at their base the oil ports. Position was added which has not supported by specification. The amendments made by applicant are not allowed in view of Section 57 and 59…
- Additional two more prior art references D5 and D6 were cited in the hearing notice issued and the Respected Controller has alleged that the cited references lack inventive step in view of D1 to D6.
An appeal was filed (16th December, 2015) to the IPAB against the order dated 18th September 2015, passed by the Respondent rejecting the grant of the Appellant’s patent application numbered 1202/MUM/2005.
The IPAB reviewed the specification together with the drawings as mentioned in the arguments presented by the learned counsel of the appellant.
Relevant excerpt from the IPAB order:
We have seen that paragraph 1 on page 7 of the Complete Specification mentions about channel as ““Referring to the aforesaid figures 1 to 4 a base metal plate (1) has cavities (2)-(2) connected by channels (3)-(3) together forming the cavity network….”. Further once we refer to the drawings and particularly Fig1-4 we see that channels referred to in the description are ‘open’ in nature. Though the word “open” is not found explicitly mentioned in the description but once the description and the drawings are read together, it is clear that the “channel (3)-(3)” as explicitly mentioned in the description, is in fact “open channel”. Therefore, if the appellant has amended “channel” to “open channel”, the amendment is well supported by the description when read with the drawings and if the adjective ‘open’ is added to “channel” in the claims, the scope of the word “channel” is narrowed. Further, the view of the respondent that appellant added the word “open” to escape the inventive step objection; we will deal when we analyze the inventive step. For now it is clear that the appellant while supplementing the word “channel” with the word “open” and amending the claims with the phrase “open channel”, have support in the complete specification when the description is read with the help of drawings.
After reviewing the description and the drawings, we are convinced that the position of the non- return valves remains unaltered. It’s basically when defining the position with reference to oil ports (4)-(4) the position of the non- return valves is at “the mouth of the said oil ports” and while defining with respect to cavity, it is at “the base of the cavity”. The oil ports are at the base of cavities and on the mouth of the oil ports, the non return valves are placed. Either way, it is explained the position of the valve remains the same. Therefore, these amendments also find its support in the description when read with the drawings and well within the scope of original disclosure.
The IPAB held that both the amendments are well within the scope of the original specification and are not a part of newly introduced matter. The amendments are made by way of explanation and do not attract the provision of section 57 and 59 of the patent act.
Conclusion:
At the stage of drafting the specification, one may not incorporate or miss out minute details that may be evident from drawings but may not be that essential at that stage. However, during the prosecution, one may desire to amend the claims (based on the cited documents) considering the feature that is disclosed in the drawings, but not explicitly disclosed in the specification. There have been instances, where such amendments are considered as newly added subject matter or matter not supported in the originally filed specification and objections are raised under section 57 and 59 of the patent act. The present order provides an understanding to the amendment that are allowable under section 57 and 59 of the patent act. It also throws light to the importance of analysing the claimed invention together with the description and the drawings and the importance of the drawings submitted along with the specification.
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International civil groups block India’s fight for IPR waiver for Covid Drugs
On October 2, 2020, India and South Africa negotiated with the World Trade Organization (WTO) to renounce any IP rights relating to COVID-19 drugs, vaccines and other related technologies for a restricted period. India and South Africa had suggested that the proposal should be recommended as early as possible to the General Council but the developed countries questioned its relevance and usefulness. As specified in the proposal, the waiver would last for as many years as agreed from the decision of the General Council and would remain intact until widespread vaccination is globally available and fair proportion of the world population has developed immunity towards COVID-19.
In support, South Africa also urged the TRIPS Council that all WTO members should work together to ensure that IP rights do not create barriers to the timely access to affordable medical products indispensable to combat Covid-19. India asserted that, with the development of new diagnostics, vaccines and related technologies for Covid-19, there could be tendencies of arousal of remarkable issues about availability of these developments. Besides, issues regarding making availability of these technologies and developments in sufficient quantities and at economical prices to meet global demand is something which can’t be discarded. Besides, the possibility of concerns regarding critical shortages in medical products can put at grave risk, patients suffering from other communicable and non-communicable diseases. The World Health Organisation (WHO) has supported India and South Africa’s move. In fact, the WHO is in support to ease international & intellectual property agreements on Covid-19 vaccines, treatments & tests in order to make the tools available to all who need them at an affordable cost.
At the same time, International public health advocacy groups are backing India and South Africa’s joint proposal to the WTO to waive off certain provisions of the Trade Related Intellectual Property Rights (TRIPS) for Covid-19 therapeutics, including vaccines. The US, European Union, the UK and Switzerland, and other developed countries have not supported India and South Africa’s proposal. On the other hand, several developing countries, including China, Pakistan, have backed the proposal.
The US has been trying to push India to tighten its IPR regime. The US and the EU have backed India’s proposal on grounds of provision of Section 3(d) of India’s Intellectual property legislation which allows the Indian Patents Controller to deny patents on entities that are not significantly different from their older versions. This prevents pharmaceutical majors from getting fresh patents on medicines with expired patents by making just cosmetic changes in its formation. The US, at the WTO TRIPS council meeting, said that, intellectual property protections needed to be in place to support new research and innovation. According to the US, there is supposed to be no access to the drugs that have not been developed. There should be support in innovation and its essential. The US disassociated from the patent pool call and was in favour of patents for vaccines and medicines and critical role that intellectual property plays.
There is one issue jeopardizing over the Covid-19 pandemic now. If we do not address the intellectual property rights issues in this pandemic, we probably would end up seeing the repetition of AIDS tragedy that occurred in USA. People in US have died for 10 years as patented AIDS medicine was priced at between 10,000 to 15,000 dollars for a year’s supply. Finally, it was Indian patent laws that, till 2004, did not allow patenting of such medicines, helping people to get AIDS medicine at less than a dollar a day. Today, 80% of the AIDS medicines in the world come from India. Hence, it is unlikely that the vaccines for COVID-19 will provide lifetime immunity. Unlike AIDS, where patient numbers were smaller, but COVID-19 is a visible threat for anyone. Any attempt to hold people and governments to ransom on COVID-19 vaccines or medicines, could see the collapse of the entire patent assembly of TRIPS that big pharma has built.
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What is PPH (Patent Prosecution Highway)? …. Why PPH? ….All that you need to know
Patent Offices across the globe have come up with various bilateral agreements to promote work-sharing and enable accelerated prosecution of patent applications at the office of second filing (OSF).
Pic: Global PPH status as of November 12, 2020(Courtesy: WIPO)
Patent Prosecution Highway (PPH) is one such bilateral agreement signed between the participating countries to reduce the search/examination burden and enhance the quality of examination in major patent offices in the world. PPH was first developed between the USPTO and JPO and the corresponding Pilot program commenced on July 03, 2006. The PPH enables reduction in patent application redundancy in partner patent offices, accelerates the process to provide expedited patent prosecution with better allowance rate and significant cost reduction mechanism.
PPH can be opted for applications that satisfy the following criteria:
- The patent application should not have been filed that recently that the prosecution in the Office of First Filing (OFF) has not reached a successful conclusion; and
- The patent application should not have been filed that long ago that the examination as already begun at the OSF.
Hence, Applicant wishing to avail the benefits of PPH must keep abreast the prosecution status of the related patent application in OFF and the OSF countries such that once the OFF issues allowance, the Applicant can request for PPH before the patent application is allotted for examination in the desired OSF.
|
Sl No. |
PROs |
CONs |
|
1. |
Time taken for examination shall be lesser. |
The claims cleared by OFF are set as the limitation for the claims applied in OSF |
|
2. |
Advantageous for cross-licensing negotiations |
Negative comments by the examiner in an OSF may be used during litigation against patent granted in OFF. |
|
3. |
Reduces overall costs |
Compromises the OSF examination quality by reducing the number of prior arts that could have been examined. |
Some Effective Strategies to make the most of PPH may include:
- Identify eligible pairs of OFF and OSF
- Identify the potential future OFF and OSF patent applications before the program starts.
- Identify patent applications for PPH that are divisional applications in the OFF. If the OFF of the divisional patent application is USPTO then the first set of claims can be applied via PPH route in the OSF and the other set of claims can be filed as a continuation patent application for conventional prosecution at a later stage. This enables preservation of broader claims.
The Patent Prosecution Highway (PPH) pilot program between Indian Patent Office (IPO) and Japan Patent Office (JPO) begins on December 07, 2020. The IPO has issued the guidelines for submitting the request for entering the IPO under the PPH program that is elaborated HERE.
The Applicant may note the following points while considering the PPH to enter the IPO from JPO:
- Number of requests for the PPH in IPO is limited to 100 per year (based on first come first basis).
- An Applicant may file not more than 10 PPH requests per year,
- Request for assigning special status for expedited examination must be filed online using FORM 5-1 under the chapter 5 of PPH guidelines,
- In case defects are notified by the IPO in Form 5-1, the Applicant will be given 30 days as time period to rectify the same.
- Applicant may request for expedited examination on Form 18A only after the IPO has accepted the request for assigning special status for expedited examination filed on form 5-1 as prescribed in chapter 5 of PPH guidelines.
- Notwithstanding the above procedure, the timelines for filing a request for expedited examination will be as prescribed under the Patent Rules, 2003.
PPH enables both powering up the patent prosecution process as well as weakening the global patent system in different ways. However, one can monetize based on the advantages of using PPH by consulting a qualified Patent Counsel for reviewing their patent application and identify strategies for maximizing the potential benefits of PPH programs.
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Can pre-grant opposition be filed while the decision of the Controller is on appeal before the IPAB?
Dhaval Diyora vs. Union of India and ors. decided on November 5th, 2020 by Bombay High Court writ petition (l) no. 3718 of 2020.
The Bombay High Court addressed the question of whether the pre-grant representation could be filed while the decision of the Controller of Patents to reject a patent application is on appeal before the IPAB.
This case refers to the Patent Application Numbered 991/MUMNP/2003 in the Indian Patent office that was published on 16/03/2007.
Pfizer Products Inc had filed an application for patent grant in India on October 27, 2003. The application referred to invention titled “Optical Resolution of (1-Benzyl-4-Methylpiperidin- 3-YL) Methylamine and the use thereof for the preparation of Pyrrolo 2, 3-Pyrimidine Derivatives as Protein Kinases inhibitors”. After a series of examinations and responses, the Controller of Indian Patent office rejected to grant a patent for the above mentioned Patent Application. The Controller of India Patent Office refused the patent grant on the grounds that Pfizer Products Inc had not disclosed EPO action and the compound was the same as the subject matter of another.
However, Pfizer Products Inc filed a review on August 9, 2011. That was also rejected. Further, Pfizer Products Inc filed an appeal before the Appellate board on June 26, 2014.
Meanwhile, the European Opposition Division order was issued on October 27, 2014 which declared that claim compound was novel and invented.
The IPAB passed an order directing the Indian patent office to consider the matter afresh. The Controller held that the invention was not patentable and rejected the Application on September 3rd 2015.
However, the appeal was pending before the IPAB. IPAB took up the appeal on August 10, 2018 and order was reserved for giving reasons on merits and stated that the hearing was concluded on August 10, 2018, and it was fixed for pronouncing the reasons on 21st August 2018.
On 18 August 2020, the Petitioner filed pre-grant opposition. Pfizer Products Inc replied that the application was not maintainable on the same day.
It is laid down by the Supreme Court in Bureau Veritas & Ors that when the court records as to what transpired in the court, it is conclusive of the fact stated. It cannot be controverted in such a casual manner as said to be done by the Petitioner.
Further, it should be noted that the scheme of section 25(1) read with Rule 55 postulates that both the applications seeking patent and pre-grant opposition are to be heard by the Controller simultaneously. However, the Section 25(1) read with Rule 55 does not apply for the IPAB.
In this case, the Petitioner had not filed a single pre-grant opposition since the date of publication i.e., March 16 2007 until the final rejection by the Controller on September 3rd 2015. The Section 25(1) postulates that the pre-grant opposition can be filed during the period from the date of publication till the date of final rejection by the Controller in the Indian Patent Office. Further, the IPAB too concluded the hearing for the patent application on August 10, 2020 and the order was reserved for giving reasons on merits. But the Petitioner filed the pre- grant opposition only on August 18, 2020 i.e., after both the Controller as well as the IPAB had effectively concluded the hearing on the patent application by Pfizer Products Inc. Since the application seeking patent was rejected by the Controller of Indian Patent Office, the Petitioner has no right to file a pre- grant opposition u/s 25(1). Secondly, after the Appellate Board has allowed the appeal and has directed the Controller to issue the patent, only ministerial actions remained, and no pre-grant opposition could be filed. Hence the IPAB granted the patent to Pfizer Products Inc on 21 August, 2020.
The Petitioner approached the Bombay High Court with a writ Petition stating that the Appellate Board pronounced the order on 21 August 2020 granting the patent to Pfizer Products Inc. The contentions raised by the Petitioner was based in two parts:
- U/S 43, the patent application is granted when it is sealed and not when the hearing is concluded with the phrase- “patent shall be granted”.
- U/S 117-D the Procedure for application for rectification, etc., before Appellate Board- the section 117-D postulates that the Appellate Board can only rectify the application.
The contingency specified under the first part of section 43 was already over, and only ministerial act remained to issue the patent. Section 116 and 117 of the Act confer wide powers on the Appellate Board. As per section 117- D (2) of the Act the orders passed by the Appellate Board have to be implemented by the Controller. Section 117-D(2) pertains to amendment of entries and therefore order of Board is an order granting the patent. The Appellate Board had granted the patent.
In particular, Pfizer Products Inc, the Controller and the IPAB referred to section 117-D(2) stating the IPAB can not only look into an application for rectification but to every order or judgement relating to patent under the Act. Hence, the IPAB rejected the appeal, holding that once the appeal is kept for pronouncement of reasons, application to the effect that order should not be pronounced cannot be entertained.
Further, the Bombay High court observed that The Legislative intent to widen the locus standi under the amended Section 25(1) is not to create individual right as such but to provide access to any person to assist the controller in taking a correct decision. The legislature has not conferred this right to be abused. Hence the Bombay High court dismissed the Writ petition and concluded that the Petitioner’s pre-grant opposition is not maintainable in law, therefore the challenge of the Petitioner to the impugned order cannot be entertained and no direction can be issued to hear the application filed by the Petitioner.
The sequence of events is as follows:
|
Sl. No |
Date |
Event |
|
1. |
29 May 2002 |
Pfizer Products Inc filed an International Patent Application – PCT/IB02/01905 |
|
2. |
10 June 2002 |
National Phase Application |
|
3. |
27 October 2003 |
Pfizer Products Inc filed National Patent Application – PCT Appl. PCT/IB02/01905 |
|
4 |
16 March 2007 |
National Patent Application 991/MUMNP/2003 was published under Section 11-A |
|
5 |
30 March 2008 |
1st FER |
|
6 |
27 January 2009 |
FER reply by Pfizer Products Inc |
|
7 |
14 March 2011 |
Notice was issued by the Controller of India – two groups of inventions cannot be included in the same application and the claims were not novel. |
|
8 |
9 June 2011 |
Written submissions were filed along with the amended claim by Pfizer Products Inc |
|
9 |
9 August 2011 |
2011 Pfizer Products Inc filed a review. Cause: The Patent Office refused Pfizer Products Inc 's application on the ground that Pfizer Products Inc had not disclosed European Patent Office action and the compound was the same as the subject matter of another.
|
|
10 |
27 March 2014 |
Review dismissed. |
|
11 |
26 June 2014 |
Pfizer Products Inc filed an appeal before the Appellate Board. |
|
12 |
27 October 2014 |
European Opposition Division order was issued which declared that claim compound was novel and invented. |
|
13 |
31 October 2014 |
Appellate Board passed an order directing the Patent Office to consider the matter afresh. |
|
14 |
22 January 2015 |
Hearing. |
|
15 |
30 January 2015 |
Claims amended and filed. |
|
16 |
3 February 2015 |
Written submissions were filed. |
|
17 |
3 September 2015 |
The Controller held that the invention was not patentable and rejected the application. |
|
18 |
10 August 2020 |
The Appellate Board concluded the hearing |
|
19 |
18 August 2020 |
Petitioner filed pre-grant opposition. |
|
20 |
18 August 2020 |
Pfizer Products Inc replied that the application was not maintainable. |
|
21 |
21 August 2020 |
IPAB grants the patent to Pfizer Products Inc. |
|
22 |
22 September,2020 |
The Petitioner approached the High Court with a Writ Petition |
|
23 |
05 November, 2020 |
Writ Petition dismissed. |
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