EDITORIAL

Contents

How To Publish Your Invention As A Prior Art For A Patent Application..........................................…02Intermediary Liability For Intellectual Property Infringement……............................................…04Indo-Japan Patent Prosecution Highway ………………………………….................................09Patents In Pharmaceutical Industry …….....................................................................................17Patent Infringement In India ………………………………..........................……………....….19Refusal Of Trademark Registration (Absolute Grounds)……....................................................….21

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HOW TO PUBLISH YOUR INVENTION AS A PRIOR ART FOR A PATENT APPLICATION

Amit Khandelwal

An inventor needs to file his invention in patent office to prohibit another person from getting grant of similar invention by the patent office or to prohibit a similar invention to be retained as a trade secret. If an inventor does not want to file his invention in the patent office, then he can use the publication approach to achieve above mentioned target. The inventor needs to publish his invention in such a way that it is easily available to a patent examiner. Some options are mentioned below on how to publish your invention which will increase chances of a patent examiner easily finding it as a prior art for another invention that may be similar to your invention.

Use Prior Art Archive1Prior art archive is a tool to search for a prior art for a patent application. Prior art archive is a large data set which offers upload benefit of an invention and utilizes machine learning technology to provide efficient search capability. Further, the data sets of this tool are broadly available to public through different sites such as Google Patent. We can upload our invention in this tool so that an examiner can easily find our invention as the prior art for similar invention filed as the patent application.

Use of Academic Journal/Conference

Inventors can write about their invention as an academic paper to publish in an academic journal or present in a conference. After the public presentation of the invention through the journal or the conference, the inventor needs to increase citation of the 1 https://techcrunch.com/2018/10/03/mit-google-cisco-and-uspto-create-

prior-art-archive-for-better-patents/

published paper so that it can easily be accessible to the public. This accessibility of the published paper ensures that the invention is present as a prior art for a patent examiner.

Use of Google Scholar

We can upload a paper (which is related to our invention) in Google Scholar data base to increase the availability of the paper for an examiner. To upload the paper in Google Scholar we need to upload the paper manually i.e. by selecting type of a paper. Further, we can use different sources that provide availability of the paper in Google Scholar. For example, Research Gate provides an opportunity for availability of the paper in Google Scholar by directly providing the paper to the database or by indexing the paper in the resource.

Indexing of Search Engine2To find any prior art for a patent application, an examiner typically uses Google search engine. Therefore, to present an invention as a prior art, you can use a web page providing a link for your invention which can be indexed by the search engines. This can be done by submitting a web page address to the search engines so that the search engines can provide proper indexing for the web page associated with the invention. Further, the inventor can check that crawling status of the web page by using search console. In addition to above, we need to aware of some points mentioned below to ensure inclusion of your invention in search engines data base:

2 https://neilpatel.com/blog/google-index/

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i. Web page should avoid binding a user to fill any login credential or any membership login to access the invention.

ii. Web page should avoid providing any redirect option to access the invention because google policy does not allow to use any indexing that provides redirect option to access the invention3.

Use of Commercial Databases4These databases contain information in form of magazines, books, articles, research papers etc. A patent examiner sometime uses some of these commercial databases to find a prior art for a patent application. Therefore, to enable your invention as a prior art you need to submit it to these databases as well. After submitting the invention, you can also examine its availability in the commercial databases by using database retailer, internet source, a library, information professional, and personal subscription of database.

Use of Defensive Publication

This approach is mostly used in patent field to prohibit the third party from getting a patent. This approach provides any invention to be easily accessible in public domain. 5In this approach, an inventor first publishes his invention in research journal and online data base, and after that this invention is broadcasted to patent office. In this way the inventor can bar another application for a similar invention being granted in future by an examiner.

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3 https://www.contentkingapp.com/academy/control-crawl-indexing/4 http://spireproject.com/database.htm5 https://www.patracode.com/research-disclosure-defensive-publication-

service/

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INTERMEDIARY LIABILITY FOR INTELLECTUAL PROPERTY INFRINGEMENT

Anjana Viswanath

Introduction

Internet intermediaries refer to entities which provide services that facilitate people to use the internet. They include network operators, network infrastructure providers, internet access providers, internet service providers, social networks, search engines and aggregators, internet cafes etc.6 The social networks offer platforms for users to publish self-generated content whereas the search engines index and provide access to user-generated content. The e-commerce sites provide the users an online platform for buying/selling of products/services. In the initial days, the social networks and other internet platforms were believed to promote free speech as the users were to voice their opinions and comments on various social and political issues without an editorial process. These online platforms were supposed to be regulating themselves to prevent unlawful content appearing in them. Therefore, the intermediaries were given ‘safe-harbour’ against third party content7. In other words, they were not considered liable for user generated content. However, with the passage of time, these intermediaries have grown in stature with millions of users around the world. Self-regulation has become practically impossible due to the huge volume of user generated data handled every day by these platforms. The propagation of false information and unlawful content through the online platforms has raised alarms worldwide. Also, there have been

6 https://www.apc.org/en/pubs/apc%E2%80%99s-frequently-asked-questions-internet-intermed

7 https://sflc.in/sites/default/files/reports/ Intermediary_ Liability_2_0_-_A_Shifting_ Paradigm.pdf

instances where intellectual property rights have been infringed by the content hosted by these intermediaries. Consequently, there is an increasing demand for imposing greater liability on the internet intermediaries for intellectual property rights infringement2.

Internet intermediary liability refers to the legal responsibility of intermediaries for unlawful activities carried out by the users through their services1. The present article examines internet intermediary liability with special reference to the infringement of intellectual property rights in the context of the Indian law.

Internet intermediary

As per the Organization for Economic Co-operation and Development (OECD) “internet intermediaries bring together or facilitate transactions between third parties on the internet. They give access to, host, transmit and index content, products and services originated by third parties on the internet or provide internet-based services to third parties2”. Internet intermediary is defined in section 2(1) (w) of the Indian Information Technology Act. The act reads - “Intermediary, with respect to any particular electronic records, means any person who on behalf of another person receives, stores or transmits that record or provides any service with respect to that record and includes telecom service providers, network service providers, internet service providers, web-hosting service providers, search engines,

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online payment sites, online-auction sites, on-line-market places and cyber cafes2”.

Extent of intermediary liability

There are different viewpoints worldwide on the extent to which an intermediary should be held responsible for the content generated by the user. In general, these could be summarized in the form of three models namely - strict liability model, safe harbour model and broad immunity model.

y In the strict liability model, the intermediaries are held unconditionally liable for user-generated content and hence they should monitor the content and ensure its compliance with the law2.

y In the safe-harbour model, the intermediaries are granted conditional immunity provided they fulfill some requirements as specified by the law. This model includes “notice-and-takedown” processes, which are procedures regarding the receipt and processing of content takedown requests to be followed by the intermediaries. The intermediaries may be instructed to have content filters in place so as to avoid hosting or transmission of unlawful content. The safe-harbour model of intermediary regulation is followed by the EU e-commerce directive, US Digital Millennium Copyright Act and the Indian Information Technology Act2.

y In the broad immunity model, the intermediaries are given broad, sometimes conditional, immunity from liability for user-generated content. In this model, the intermediaries are not required to monitor the user generated data for unlawful content.

However, irrespective of the liability model followed, the intermediaries are obliged to take down unlawful content when they are instructed to do so through legal procedures2.

Intermediary liability jurisprudence in India

The Indian Copyright Act of 1957 was amended in the year 2012 whereby the section 52 described a number of instances where exemption could be granted for copyright infringement. As per the section 52(1) (c), the acts of intermediaries are exempted from copyright infringement unless they are aware or have reasonable grounds for believing that such storage is of an infringing copy8. The intermediaries are exempted from liability under the section 79 of the Indian Information Technology Act if the offence or contravention was committed without his knowledge or that he had exercised all due diligence to prevent the commission of such offence. Therefore, the intermediary is protected from copyright infringement if they were not aware that the hosted content was copied material3.

The section 79 of the Indian Information Technology Act containing the “safe-harbour provision” was amended in 2008. The definition of intermediary was broadened to include the telecom and internet service providers, search engines, online marketplaces and cyber cafes. The safe-harbour protection was extended to all intermediaries. The intermediaries were given protection from all unlawful acts rather than offences covered under the IT Act. However, the intermediaries are required to observe due diligence and follow government guidelines. They should abstain from conspiring,

8 http://www.mondaq.com/india/x/829986/ Copyright/Intermediary+Liability+And+Copyright

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abetting, aiding or inducing the commission of any unlawful act. Also, they should promptly remove unlawful content upon receiving ‘actual knowledge’ or notice from the government2. Further the Information Technology (intermediaries guidelines) Rules, 2011, specified a set of conditions to be fulfilled by the intermediaries in order to obtain safe-harbour protection. These include (1) publishing of privacy policies and user agreements (2) specification of prohibited content including the infringing intellectual property rights (3) a stringent notice and takedown process (4) support to law enforcement agencies (5) reporting of cyber security incidents to the authorities and (6) appointment and notification of a grievance officer2.

In Avnish Bajaj v. State (2008), the managing director of a company was charged with criminal provisions for hosting third party content on an e-commerce platform. However, the proceedings were quashed by the Supreme Court in 2012, citing that the managing director could not be prosecuted without arraigning the company as an accused party. In Sabu Mathew George v. Union of India (2008), the Supreme Court of India issued interim orders to block advertisements related to pre-natal gender determination from appearing in the results provided by internet search engines. The court stated that the intermediaries are required to keep away unlawful content from their networks. In Google v. Visakha Industries (2009), a criminal defamation case was filed against a blog post hosted on the blog publishing service of Google. The High Court observed that Google did not remove the defamatory material, even after the receipt of takedown notice from the company. Hence, the court refused to grant safe-harbour protection to Google2.

Sending offensive messages through communication services was punishable under section 66A of the Indian

Information Technology Act. Shreya Singhal v. Union of India (2015) is considered as a landmark judgment wherein the Supreme Court struck down section 66A as unconstitutional. The court stated that this section was severely affecting the fundamental right of free speech and thus, was against Article 19(1)(a) of the Constitution. The court read down Section 79 and held that the ‘actual knowledge’ required for an intermediary to take down content has to be either a court order or a notice by the government and should comply with Article 19(2) of the Constitution2. The Delhi High Court, in Myspace Inc. v. Super Cassettes Industries Ltd. (2017), held that if intermediaries are held responsible for identifying unlawful content, it could adversely affect free speech. In matters pertaining to copyright infringement, the court perceived the ‘actual knowledge’ requirement from Shreya Singhal v. Union of India to mean ‘specific knowledge’. Therefore, the intermediaries are required to remove content when specifically pointed out by the intellectual property rights holders even without a court order2.

Recent cases where the e-commerce platforms have been accused of intellectual property infringement have drawn attention to the growing challenges faced by the design, trademark and copyright holders in India. Infringement of design and trademark tarnishes the reputation of established brands and puts the unsuspecting consumers at risk. In most cases, it is difficult to trace the unscrupulous sellers while the intermediaries enjoy safe harbour protection9. In Kent RO Ltd v. Amit Kotak & Ors (2017), Kent RO Systems filed for permanent 9 ht tps://www.worldipreview.com/contr ibuted-art icle/india-e-

commerce-liability-for-platforms-is-coming-at-last

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injunction against one Amit Kotak for infringing its intellectual property rights by copying its designs and eBay India Pvt Ltd. for aiding the infringement by allowing the respondent to sell its product on their website. The court held that compelling an intermediary to screen content would amount to “an unreasonable interference with the rights of the intermediary to carry on its business2”. With reference to trademark infringement, the Delhi High Court prescribed a few guiding principles on intermediary liability and outlined twentysix tasks that an intermediary may carry out in Christian Louboutin SAS v. Nakul Bajaj and Ors (2018). In the above case, the defendant was accused of selling counterfeit products through the website Darveys.com. Further, it was alleged that the defendant used the plaintiff’s name as “meta tags” in the said website thereby infringing the trademark rights of the plaintiff2. The court held that the benefit of safe harbour provisions under Section 79 of the information technology act could not be extended to an intermediary which actively participated in a transaction which amounted to infringement of intellectual property rights4. In Amway & Ors v 1MG & Ors (2019), the Delhi High Court stated that trademark infringement is based not merely on the probability of counterfeit products being sold online. The trademark holder has the right to oppose further dealings of the goods placed in the market where the condition of the goods has been impaired as per section 30 of the Trademarks Act (1999). The court also stated that the impairment of goods need not be mere physical impairment but could also include the differences in services and warranties, advertising and promotional efforts, packaging, quality control, pricing and presentation4.

A thorough examination of the above cases and the statutory provisions reveals that in India, the intermediaries can be held liable only when they have received proper information and/or order from the competent authority3. The draft information technology [intermediaries guidelines (amendment) rules] were issued by the Ministry of Electronics & Information Technology in 2018. As per the draft rules, the intermediaries are required to trace out the information originator to aid in law enforcement, to

deploy content filtering tools and to remove unlawful

content within 24 hours. Also, there is provision for

mandatory incorporation of intermediaries with more than 5 million users in India2.

Manila principles on intermediary liability

The Manila principles on intermediary liability was formulated and endorsed by civil society groups from around the world. These principles outline a set of best practices to protect human rights when the internet intermediaries are instructed to curb online content10. The principles include the following “(1) Intermediaries should be shielded from liability for third-party content (2) Content must not be required to be restricted without an order by a judicial authority (3) Requests for restrictions of content must be clear, be unambiguous, and follow due process (4) Laws and content restriction orders and practices must comply with the tests of necessity and proportionality (5) Laws and content restriction policies and practices must respect due process (6) Transparency and accountability must be built into laws and content restriction policies and practices11”.

10 ht tps://wilmap.law.s tanford .edu/ent r ies/manila-pr inciples-intermediary-liability

11 https://www.manilaprinciples.org/

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Conclusion

The role of internet intermediaries such as internet service providers, social networks and search engines is increasingly becoming important with the tremendous growth of online platforms for social networking, business, education and entertainment. There are conflicting views on the liability of intermediaries for user generated content and the need for content regulation. The liability models adopted by the regimes all over the world range from the imposition of strict liability to the grant of broad immunity. The enforcement of strict liability on the intermediaries may have a chilling effect on free speech. Monitoring and filtering of online content by the intermediaries may not be feasible due to the huge volume of data involved and may also raise privacy concerns. On the other hand, providing broad immunity to the intermediaries may lead to a proliferation of unlawful and objectionable content in the online platforms. Adequate measures need to be put in place to safeguard the intellectual property of rights holders as exemplified by the proceedings listed out in this article. The newly formulated draft rules have invited renewed focus

on the debate on intermediary liability in India. A balanced approach on intermediary liability, which would protect the interests of all stakeholders, is the need of the hour.

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INDO-JAPAN PATENT PROSECUTION HIGHWAY Ankur Srivastava

Introduction

Patent Prosecution Highway (PPH) is a bilateral arrangement signed between patent offices to promote work-sharing and enable patent applicants to request accelerated processing in the national phase, where patent examiners can make use of the work products from the other Office(s).1

PPH includes referring and considering the cited prior art references of the search and results and/or conclusions of the substantive examination of one patent office while examining the application by the other patent office.

Indian Scenario

The honorable Prime Minister of India, Sri. Narendra Modi, during his visit of Japan in October 2018 for the India-Japan Annual Summit, with the Prime Minister of Japan Shinzo Abe, recognized close cooperation in Intellectual Property Rights between the Intellectual Property Offices of the two countries. The two leaders concurred to start a bilateral PPH programme on a pilot basis in certain identified fields of inventions in the first quarter of FY 2019.2

Indo-Japan PPH - Background

In recent years, Japan has shown strong support for key transformational initiatives such as “Make in India”, “Skill India” and “Clean India Mission”, through sharing of resources and advanced technologies, and active mobilization of Japanese public and private sector investments.

The JPO has been cooperating for swift acquisition of IP rights in India through a memorandum of

cooperation (MOC) between the Department of Industrial Policy and Promotion (DIPP), Ministry of Commerce and Industry (MCI) in June 20153. In May 2017, the JPO agreed on a revised Action Plan enlarging cooperation with the Office of the Controller General of Patents, Designs, & Trade Marks and in September 2018, after the Second JPO- DIPP Review Meeting in August 2018, JPO and DIPP agreed in principle, to start a bilateral PPH program on a pilot basis in certain identified fields of inventions in the first quarter of fiscal year 20194.

After the Second Review Meeting on IP, the JPO and the DIPP agreed in principle to start a bilateral PPH program on a pilot basis in the first quarter of fiscal year 2019. Additionally, the JPO and the DIPP both agreed on implementation of a variety of initiatives including the below listed areas:

y Information exchange related to IT infrastructure.

y Cooperation in the field of IP awareness.

Approval on the Indo-Japan PPH5

A release from Press Information Bureau Government of India Cabinet on November 20, 2019, confirms that the Prime Minister Shri Narendra Modi has approved the proposal for adoption of PPH programme by the Indian Patent Office (IPO) under the Controller General of Patents, Designs & Trade Marks, India (CGPDTM) with patent offices of various other interest countries or regions.

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This PPH programme will initially commence between Japan Patent Office (JPO) and Indian Patent Office on pilot basis for a period of three years only. Under this pilot programme, Indian Patent Office may receive patent applications of certain specified technical fields only, namely, Electrical, Electronics, Computer Science, Information Technology, Physics, Civil, Mechanical, Textiles, Automobiles and Metallurgy while JPO may receive applications in all fields of technology.

The ambit of the programme may be extended in future, as decided by the Commerce & Industry Minister. The patent offices will frame their own guidelines for implementation of the programme.

Benefits

This Indo-Japan partnership may lead to the below listed advantages for the IPO:

y Reduced time for disposal of Patent Application(s).

y Increased effective active life of the Patent(s).

y Improved quality of examination procedure of Patent Application(s).

y Accelerated examination in Japan for patent applications claiming priority from India.

Conclusion

In a nutshell, the Indo-Japan PPH programme can be seen as a landmark initiative in the Indian patent prosecution system. This programme is expected to be advantageous in terms of expedite patent allowance and cost effectiveness. This programme will encourage the Japanese applicants to enforce their applications in Indian Jurisdiction.

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Recently, Singh & Associates team congregated to celebrate its maiden Annual Day termed “Spectrum” on Dec. 20 2019 at The Oberoi, Gurugram.

Just as the name suggests, Spectrum signifies the diversity of professionals, many accomplishments, and varied services at Singh & Associates. The event was aimed to share long-term vision with the colleagues, providing them with an outline of milestones accomplished, and perspective of where the firm is heading to. The event was also our way of high-fiving every one of our colleagues who helped the firm to get where we are today.

Welcoming the colleagues, Mr. Manoj K Singh, Founding Partner, S&A, delivered the opening address and took us briefly through the S&A journey starting from one room and a team of two back in 2002. Growing multi-directionally, S&A is now amongst the leading law firms, staffed by a team of over 150 professionals with a strong core. He mentioned the upshot is not the contribution of an individual but a team impact.

Ms. Gunita Pahwa, Joint Managing Partner, S&A, took us through the company deck and inspired the colleagues to continue the great work. She shared firm’s aspirations of becoming the front-runner in the industry and strengthening various practice groups through partnerships and collaborations.

Ms. Daizy Chawla, Managing Partner, Mr. Vijay K Singh, Senior Partner and others further enriched the audience with their thoughts, significant cases and its achievements.

To mark the occasion, star performers were applauded with awards for their noteworthy contribution. The true spirits and ideals of S&A were commemorated when Mr. Manoj struck up an open dialogue with the employees seeking their feedback. The event wrapped up with a dash of humour from one of the best stand-up comedians of the country.

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IN QUEST OF RESOLVING COMMERCIAL DISPUTES

Arbitration is the preferred dispute resolution mechanism for resolving of commercial disputes

Recently, Singh & Associates (S&A) team gathered up to celebrate QUEST 2.0, a one-of-a-kind event, with the theme, “Arbitration - Legal Insights & Updates”, at The Oberoi, Gurugram. The event was organized in association with Knowledge Provider - EY Forensic & Integrity Services; and Magazine Partner - Legal Era. The stage was set for yet another hallmark event. Welcoming the delegates, industry leaders and other stakeholders, Gunita Pahwa, Joint Managing Partner, S&A, delivered the opening address saying, “QUEST has been conceptualised by S&A as a knowledge exchange series. QUEST 2.0 focuses on the role of arbitration and examines the ways forward. As the Indian economy and the dispute resolution mechanism are maturing so is the alternate dispute resolution mechanism.” The event was graced by Hon’ble Justice Mr. Dipak Misra, Former Chief Justice of India, as Chief Guest, in the presence of Hon’ble Justice Ms. Hima Kohli, Judge, Delhi High Court, as Guest of Honour, Dr. Lalit Bhasin, President of the Society of Indian Law Firms, and the Bar Association of India as Guest of Honour. The Keynote Speakers at the event included Mr. Neeraj Kumar, Group CEO & Whole-time Director, Jindal SAW Ltd.; Mr. Jawed Zia - Vice President, Established Pharmaceuticals, ABBOTT India and Mr. Arpinder Singh, Partner and Head - India and Emerging Markets, Forensics and Integrity Services, Ernst & Young.

Hon’ble Justice Mr. Dipak Misra, Former Chief Justice of India, as Chief Guest, said, “If a certain objection was not taken up in an arbitral tribunal or high court, the Supreme Court is not going to entertain the objection either in the petition.”

Dr. Lalit Bhasin, President of the Society of Indian Law Firms, and the Bar Association of India, as Guest of Honour said, “I can say with daring certainty that the book by Mr. Manoj Singh must be a brilliant piece of work, for the reason that I know the author’s competence and knowledge in the field.”

Highlighting the recent developments in Arbitration, Mr. Neeraj Kumar, Group CEO & Whole-time Director, Jindal SAW Ltd, delivered the Keynote Address said, “Arbitration should be the first port-of-call for any commercial dispute resolution at a first stage”

Jawed Zia, Vice President, Established Pharmaceuticals, ABBOTT India, addressed the gathering saying, “Pharmaceutical Industries faces complex and high-value disputes in everyday dealings many of which are resolved through Arbitration process effectively.”

Hon’ble Justice Mr. Dipak Misra, Former Chief Justice of India, as Chief Guest, and Dr. Lalit Bhasin, President of the Society of Indian Law Firms, and the Bar Association of India as Guest of Honour, unveiled the book, Infrastructure Arbitration: A Perspective, authored by Manoj K Singh, amidst a round of applause from the audience

The first Panel Discussion session, on ‘Recent judicial development in Arbitration’, included the Panellists - Manish Lamba, Senior VP Legal, DLF Cyber City Developers Ltd; Sanjeev Gemawat, Executive and Director, Dalmia Bharat Group; Atulya Sharma, Director Legal, Max Healthcare; Neeti Sachdeva, Secretary-General & Registrar at Mumbai Centre for International Arbitration. The session was moderated by Manoj K Singh, Founding Partner, S&A. The imminent Panellists gathered at Panel 1 exchanged their experience and thoughts on recent legislative and judicial trends and developments with respect to Arbitration and Conciliation Acts.

The second Panel Discussion, on ‘Role of Expert witness and importance in Arbitration’, included the Panellists - Parvesh Kheterpal, GC (Head Legal & CS), Feedback Infra Group; Sameer Chugh, Group General Counsel at Bharti Airtel; Sameet Gambhir - Joint VP (CS) at DCM Shriram Ltd; Sudhir Narang, GM, Contract Management, Hitachi India; and Arcoprovo Mitra - EY Partner Forensics. The session was moderated by Manoj K Singh, Founding Partner, S&A. In Panel 2, imminent Panellists gathered to discuss the role and importance of an expert witness in arbitration proceedings

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PATENTS IN PHARMACEUTICAL INDUSTRY -Shilpi Kumari

Introduction

A patent is a type of intellectual property right that provides protection over any novel invention and also, gives the exclusive right to sell, use, create and/or manufacture the patented product.

As new and improved drugs are being introduced every year in the market, drug or pharmaceutical patents have become particularly important as these drugs helps to generate a significant amount of revenue for their commercial benefits. The pharmaceutical sector is an area in which innovation impacts the bottom line of the drug manufacturers who focus on research and development of a new drug and incur huge costs in doing so, where there is neither a guarantee nor an assurance that their research product shall survive various testing stages and will commercially thrive if released in the market.

Importance of innovation in the drug industry

y Innovation in the Drug Patent is a key element that defines the success of a drug manufacturer.

y Innovation provides high returns on investment. While developing and launching a new drug involves huge costs, the rate of return on successful drugs can be much higher than the costs associated with introducing the drug to the market.

y While it can increase the risk involved when developing drugs, the benefits drastically

outweigh the risk as innovation allows higher profitability and better profit margins.

y Innovation is important for these companies because more and more money is spent on marketing and research of potential drugs. If these drugs don’t make it to market, then time and money spent are lost. Therefore, innovative approaches must be taken to determine how such pharma companies can make a return on their investment without losing too much money.

y While the cost of bringing a new drug to market can be high, drug companies can actually increase profits by marketing current drugs to enhance the success of those drugs that they are currently manufacturing, and are on the market.

Importance of Drug Patent

Patents contribute to roughly 80% of the overall revenue of pharmaceutical companies and obtaining patent protection is important to safeguard the innovative approaches used by pharma companies. Drug patents help recoup investments that are incurred during the research and development stage. Also, drug patents can secure against infringement cases, as competitors can easily duplicate the manufacturing of a drug. Drug patents help raise venture capital, which thus, improves the overall economic growth of companies operating in this industry.

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Requirements for Patent Protection

However, not all drugs can be patented, and thus not all inventions can be patented. There are certain criteria that must be met in order to be able to apply for patent protection and these include – the invention must be non-obvious, must be new and must be useful.

An invention is non-obvious if when comparing the invention to other previously patented inventions, it doesn’t provide the same type of support or disclose the same type of information as in other inventions. This specific criterion is one of the most important items when considering patentability of an invention. It also helps to identify what type of competition would be out there for such an invention.

The invention must be new, and not already in existence. This includes any inventions that were previously patented, whether the invention is identical or very similar in nature. It is also important to keep in mind that if the invention is being used, you may run into a problem. If that invention is being used but has no patent protection, it still has common law protection. But, if you submit your patent application for the same invention, you may be successful in obtaining patent protection, as the other inventor should have patented his or her invention to obtain full protection rights over the invention.

Lastly, the invention must be useful, meaning that it must have a purpose. This is probably the most easily understandable factor, as the invention must have a use, whether it be to assist in some sort of problem or benefit the user in some way.

Conclusion

Patents are originally intended to encourage innovators and maximize the greater good and if we want to help people and make healthcare more affordable, we need an even more rapid process for approval of generics. It is very important for branded pharma companies to obtain patent protection for their products in order to garner the investments. Therefore, it is important that patents are a fundamental incentive to innovative activities in pharmaceuticals and biotechnology industry, hence it need to be safeguarded.

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PATENT INFRINGEMENT IN INDIA Tushar Kohli

In India, patent infringement with respect to a patented invention without the prior permission from the patent holder is a prohibited act. A patent holder can grant a permission, if required, in the form of a license. A patent infringement, usually with respect to usage or sale of the patented invention, may vary by jurisdictions. In several countries, a use is intended to be commercial in order to constitute patent infringement.

Generally, the defined claims of the invention comprise the scope of the patented invention or the extent of protection required. In other words, the terms of the claims inform the public of what is not allowed without the permission of the patent holder. Patents are meant to be protective, and infringement is only possible in a country where a patent is enforced upon. The scope of protection varies from country to country, as the respective patent office examines the invention according to their rules and regulation depending upon the differences for rules of patentability.

TYPES OF INFRINGEMENT

There are two types of infringements as mentioned below: Direct infringement - occurs when a product is substantially close to any patented product or in a case where the marketing or commercial use of the invention is carried out without the permission of the owner of the invention.

Indirect infringement - occurs when some amount of deceit or accidental infringement happens without any intension of infringement.

INFRINGEMENT ACTION

Whenever there is a case where monopoly rights of the patentee are violated, the rights of the patentee are secured by the Act through judicial intervention. The patentee has to institute a suit for infringement. The reliefs which may be availed in such a suit are:

1. Interlocutory/ interim injunction

2. Damages or account of profits

3. Permanent injunction

Enforcement of a suit

Section 104 of the Act provides that a suit for infringement cannot be instituted in any court inferior to a District Court having jurisdiction to try the suit other than High Court, in an appropriate situation. When an action for infringement has been instituted in a high court and district court and the defendants make a counter claim for revocation of the patents, the suit is transferred to the High Court for decision because high court has the jurisdiction to try cases of revocation. Further, section 104A provides for burden of proof in case of suits concerning infringement.

When a suit can be enforced

From the period of a patent being sealed, a suit for infringement can be instituted. Further, during the period where the opposition is being decided, the applicants cannot institute a suit for infringement. However, the damages sustained due to the

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infringement, i.e. between the date of publication of complete specification and the date of grant may be claimed in a different suit.

In a situation where the term of the patent has expired and the infringement occurs during the said term of the patent, a suit can be instituted even after the expiry of the term. Further, in a case where a patent is obtained wrongfully by a person and is granted to the true and first inventor, no suit for infringement can be enforced before the period of such grant to the true and first inventor.

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REFUSAL OF TRADEMARK REGISTRATION (ABSOLUTE GROUNDS)

Ishan Sambhar

According to section 9(1), following trademarks cannot be registered:

a) Trademarks which are not capable of distinguishing the goods or services of one person from that of another person.

The Imperial Tobacco Co. of India Ltd. v. The Registrar of Trade Marks12 - The Imperial Tobacco Company is a famous company which manufactures and distributes cigarettes with a label “SIMLA” throughout the country. In the year 1960 and in 1966, ITC ltd. made an application to the Registrar for the registration of the above mentioned trademark in his register in respect of Part A and Part B in the respective years. However, the Registrar refused the application for the registration both times against which an appeal was preferred to the Calcutta High Court. The Calcutta High Court dismissed the appeal on the ground that the word “SIMLA” is a famous geographical place which cannot be registered as a trademark.

An application for registration of the trade mark “Aggarwal Sweet Corner” was allowed registration in respect of sweets and namkeen, on the basis of the user, and therefore, opposition appeal was dismissed by the Intellectual Property Appellate Board in Aggarwal Sweet Palace vs. Asst. Registrar.13

In American Online Inc.’s Application,14 the applicant sought to register the word “YOU’VE

12 AIR 1977 Cal. 41313 2005 (30) PTC 336 (IPAB)14 [2002] E.T.M.R. 6, 59.

GOT MAIL” as a trade mark in various classes. The examiner refused the application finding the trade mark was not distinctive. In appeal, the Board of Appeal held that the trade mark composed of common words to inform email users of the ordinary fact they have received a new mail and that the phrase must remain free from the individual monopoly rights.

b) Trademark which consist only of such marks or of such indications which may function in trade to specify the kind, quality, quality, geographical origin, or time of production of goods or services or other characteristics of goods or services.

This clause prohibits the registration of marks which are descriptive that identify the characteristics of the product or service to which the mark pertains. A mark is descriptive if it provides or gives the information directly.

In M/s Hindustan Development Corporation Ltd. v. The Deputy Registrar of Trade Marks15, it has been held by the court that the mark “RASOI” for edible oils cannot be registered as a trademark because such mark indicates the nature of the product.

In Central Camera Company Private Ltd v. Registrar of Trade Mark,16 the court held that the word “solar” undoubtedly refers to the sun and understood to be produced by or coming from the sun as solar energy.

15 AIR 1955 Cal. 51916 (1980) IPLR 1.

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It is common knowledge that the photographical work can be done in artificial light. In present, the goods involved were studio lights, photographic apparatus, projectors, etc. It was held that these goods have direct reference to the character or quality of the goods.

c) Trademark which consists only of such marks or indication which have become customary in the current language or in bona fide and established practice of trade. The word which have become publici juris or general cannot be registered as they belong to the public at large. It has been held by the Division Bench of Delhi High Court that nobody can claim exclusive right over the use of any word, abbreviation or acronym which has become publici juris.

Example - German word “auto” is not registered for motor cars or their parts and fittings or anything related to such kind of services. Thus, where it has been found that a large number of people have been using the same mark in the relevant trade, then such a mark cannot be registered in the name of any one person.

In SBL Ltd v. Himalayan Drug Company17, the Appellant filed a suit against the Respondent for infringement of trade mark Liv.52 by use of the trade mark Liv-T, which was dismissed on the ground that the mark ‘LIV’ is publici juris and that ‘Liv’ will be considered as the generic on account of the fact that it is used in respect of medicine used for treatment of ailment of ‘LIVER’ and non-distinctive part of the mark.18 The Division bench of Delhi High Court held that nobody can 17 1997 (17) PCT 54018 https://indiancaselaws.wordpress.com/2013/08/21/himalaya-drug-

company-v-s-b-l-ltd/,

claim exclusive right over the use of any word, abbreviation or acronym which has become publici juris.

This section is not only applied to words but also to the colour combinations. Delhi High Court held that colour red being a basic colour, red and white combination was held to be common to the toothpaste trade in the domestic and as well as international market and could not be monopolised by any party.19

The provision attached to sub- section (1) provides that a trademark shall be registered if before the date of application for registration, such trademark has acquired a distinctive character by its usage or it being a well-known trademark.

In Shalimar Chemical Works v. Deputy Registrar,20 the trademark “CHEF” of the appellant which has been used in respect of various goods particularly species, edible oil, edible products had acquired special distinctiveness merely by the way of widespread sale and promotional activity.

According to section 9(2) following trademark shall not be registered:

a) If such trademark is likely to deceive the public or can even cause confusion.

In the Leather Cloth Company Ltd. v. American Leather Cloth Company Ltd.21, the plaintiff had stamped upon their goods the words ‘tanned leather cloth’ whereas only about one-third of their whole produce was in tanned cloth. It was held by the House of Lords that the plaintiffs were disentitled

19 Colgate Palmolive ltd v. Patel (2005)20 2012 (50) PCT 576 21 (1863)4 De G.J & S 137

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for relief as they were misrepresenting about the nature of the goods.

b) If such trademark is hurting the religious sentiment of any class or section of Indian citizens. It is not difficult to find the name of any god or goddess or any religious head as a trademark in India.

Examples: The use of names or device of deities on foot wear will be considered disrespectful. Likewise, the use of Hindu gods in respect of beef or meat products or use of Muslim saints for pork products would be offending the religious sentiments of respective sections of public.

In Amritpal Singh v. Lal Babu Priyadarshi22, the word RAMAYAN was refused registration on the grounds that:

Firstly, it was not capable of distinguishing the goods of the applicant and

Secondly, that it was likely to hurt religious sentiments of a class of society.

c) If such trademark contains any kind of scandalous or obscene matters.

Obviously, a mark which is contrary to the morality or is considered obscene must not be registered and the onus will fall on the applicant to prove it so by the evidence to overcome the objection.

In Ghazillian’s Trade Mark Application,23 the trademark in question consisted of two words “Tiny Penis” in class 25 in respect of clothing, footwear and headgear. The Registrar refused the registration

22 2005 (30) PTC 94 (IPAB)23 (2002) RPC 628, p.635

on the ground that the mark was contrary to the accepted principles of morality. The appellate authority while dismissing the appeal, concluded that this trademark would cause greater offence than mere distaste to a significant section of the public. The offence resides in the fact that an accepted social and family value is likely to be significantly undermined.

d) If the use of such trademark is prohibited under the Emblem & Names (Prevention of Improper use) Act, 1950

Emblem and Names (Prevention of Improper) Act, 1950, prohibits the improper use of certain emblems and names for professional and commercial purpose. Section 4(b) of the act prohibits the registrar from registering a trademark or a design which holds any emblem or name and use of it shall be in contravention of section 3 of the Act.

Example: Mahatma Gandhi, Pandit Nehru, National Flag etc. cannot be used as Trademark

According to section 9(3) a mark shall not be registered if it consists exclusively of:

a) The shape of goods which result from the nature of the goods themselves.

Example - the shape of an egg tray, whose purpose is to hold eggs, would fall within the context of section 9(3) (a) and would not be considered as capable to distinguish from others.

b) The shape of goods which is necessary to obtain a technical result.

Example - the shape of a square pinned plug, if the pins are not square they will not fit into the standard socket therefore it is mandatory to achieve that

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standard shape which is a technical result. Hence shall not be registrable under section 9(3) (b).

c) The shape of goods which adds substantial value to the goods.

Example - shapes which are more effective than other alternatives for performing a particular task add substantial value to the goods are not registrable.

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