Journal of Intellectual Property Rights

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JULY 2005

CODEN: JIPRFG 10(4) 263-348 (2005)


ISSN: 0971-5544






Implications of New Patent Regime on Indian Pharmaceutical Industry: Challenges and Opportunities



        Sajeev Chandran, Archna Roy and Lokesh Jain




Large Innovating Firms and Patent Management: Challenges for SMEs’ Managers and IP Officials in Catching-up Economies



            Sandro Mendonça




Discrepancies in Biotechnology/Chemical Patenting


            Georgios I Zekos




Testing Parameters for Software Patentability


            Arun Kishore Narasani and Kalyan Chakravarthy Kankanala




Copyright Laws as a Means of Extending Protection to Expressions of Folklore


            Anurag Dwivedi and Monika Saroha




Patenting Activities in Agriculture from India


            Rekha Mittal and Gian Singh




Literature Review




IPR General




· Inventors and pirates: Creative activity and IPR · The political economy of intellectual property treaties · Is intellectual property impeding the achievement of land grant university goals? · IPR rights for the public good · Genetic erosion of agro biodiversity in India and
· Intellectual property and the markets of ideas · Managing and reporting intangible
assets in research technology organizations
· The impact of intellectual property on nonprofit research institutions and the developing countries they serve · Intellectual property, benefit-sharing and traditional knowledge—how effective is the Indian Biological Diversity Act, 2002? · Intellectual property management of biosequence information from a patent
searching perspective
· Supplemental forms of intellectual property protection for
· Intellectual property aspects of plant transformation · Intellectual property: The law and economics approach · A dilemma for developing countries in intellectual property strategy?






·150 years of patent office practice · India: Mining patent data for competitive intelligence
· Patents versus ex post rewards · The challenge to patent law of pure chemical protein synthesis · Science policy: On the problems of gene patents · The state of the art, advantage in the monitoring and management of knowledge · India: Patent searching an effective tool for competitive intelligence · Marking the software patent beast · United States: Measuring the patenting success of companies · Biotechnology patents and African food security · Granular moving bed filters and adsorbers · How will a substantive patent law treaty affect the public domain for genetic resources and biological material?  



Copyright and Trademark



· 'My tongue is mine ain': Copyright, the spoken word and privacy · The scope of open source licensing · Towards a new core international copyright norm · The spawn of learned hand-a reexamination of copyright protection and fictional characters · The architectural works copyright protection act · Database protection – the European way and its impact on India
· Designing copyright TPM: A mutant digital copyright · Copying and copyright · Parody and perception: An alternative approach to secondary use in copyright · A proposal in hindsight
· Trademarks disputes involving pharma brands in India · The protection of well-known trademarks following China's accession to the WTO · Design law: Individual character, visibility and functionality · The global distribution of trademarks




IPR News



IPR News—General




· EU to protect India's traditional knowledge · Yoga database · Singapore houses first WIPO office · China’s intellectual property enforcement inadequate




Patent News



· USPTO opens new electronic facility to hear patent and trademark appeals · AIDS policy influences Brazilian patent law · Biophan’s intellectual property expansion · Proposed reform of US Patent Act · Nokia frees patents for Linux kernel · Concern over BRCA2 patent
· Samsung included as party to Rambus Inc suit · Boston Scientific and Cordis battle for stent market continues · Teva loses generic battle · Damages slapped on Microsoft in patent case
· EU fines AstraZeneca $73 M for pricing · Microsoft licensing its technology to its direct competitors · Three thousand stem cell patents filed in last five years · Court decision may cut companies' R&D costs · Product patents-has India’s nightmare just begun?




Copyright and Trademark News



· WIPO concerned about illegal domain name registrations · Go-ahead for adult TLD · Wipro infringing trademark of German company · Canadian copyright bill boosts recording industry · Vietnam gears up for copyright challenge · President Bush signs Family Entertainment and Copyright Act into law · Coffee growers seek EU label protection · Food firm in a controversy over Gandhi curry


Key Patents



· Korean patent for 'smart’ orthopaedic products · Patent for next generation energy management product · A chemical compound that acts as a molecular switch · AIIMS patents artificial heart valve · Manufacture of thermo precipitating affinity polymers · Portable control device patented · Manufacturing process for a ‘tasty cup of tea’ patented




Conference Reports




CSIR-WIPO workshop on negotiating technology licensing agreements




Author Index

Chandran Sajeev                           269


Dwivedi Anurag                            308


Jain Lokesh                                  269


Kalyan Chakravarthy Kankanala     300


Mendonça Sandro                          281

Mittal Rekha                                  315

Narasani Arun Kishore                   300


Roy Archna                                  269


Saroha Monika                             308

Singh Gian                                   315


Zekos Georgios I                          287






Keyword Index

Agriculture                               315

Agro biodiversity                      321

Benefit-sharing                         323

Berne Convention                    308

Best mode requirement             287

Biotechnology patents               287

Chemical patenting                    287

Computer programs                  300

Copyright                                 308

Database protection                  329

Folklore                                   308

Form - function – test               300

Gene patents                            325

Indian Patent Act                      269

Indian patent                            315

Indigenous people                     308

Intangible assets                        322

Large firms                              281

New patent regime                   269

Open source licensing               327

Patent activity                          315

Patentability                             300

Patents                                    281

Pharmaceutical industry            269

Product patent                         269

Software patent                        326

Software piracy                        324

Software                                  300

Strategic IP management           281

Technological diversification      281

Traditional knowledge               323

TRIPS Agreement                    269

UNESCO                                308

Well-known trademarks            330

WIPO                                     308

Written description                   287









Journal of Intellectual Property Rights

 Vol 10, July 2005, pp 269-280


Implications of New Patent Regime on Indian Pharmaceutical
Industry: Challenges and Opportunities


Sajeev Chandran, Archna Roy and Lokesh Jain

Received 25 November 2004, revised 6 April 2005

The growth of Indian pharmaceutical industry has been characterized by extensive governmental control and absence of strong patent protection. This paper gives an overview of pharmaceutical industry in India and the likely impact of product patent regime on it. The analysis is based on secondary data published elsewhere. It also reviews the existing patent and drug control laws in India and how they have affected the growth and structure of pharmaceutical industry in the country. Also discussed are strategies to meet the new challenges and the opportunities that Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement presents to pharmaceutical industry in India.

            Keywords: Pharmaceutical industry, Indian Patent Act, new patent regime, product patent, TRIPS Agreement



Journal of Intellectual Property Rights

Vol 10, July 2005, pp 281-286


Large Innovating Firms and Patent Management: Challenges for SMEs’
Managers and IP Officials in Catching-up Economies

Sandro Mendonça

Received 1 March 2005, revised 7 June 2005

Intellectual property management has become a centrepiece of global corporate strategy. A key characteristic of large innovating firms today is the diversified nature of their technology portfolio. Patents in new generic technologies such as information & communication technologies, drugs & biotechnology and new materials have soared since the early 1980s. This is also true for unrelated industries, a phenomenon known as technological diversification. This paper focuses on the evolution of empirical patterns in patenting by the largest industrial companies from Europe, Japan and the US. Implications of this multi-technology trend for IP offices and small and medium-sized firms from catching-up countries are explored.

Keywords: Large firms, technological diversification, patents, strategic IP management


Journal of Intellectual Property Rights

Vol 10, July 2005, pp 287-299


Discrepancies in Biotechnology/Chemical Patenting

Georgios I Zekos

Received 8 November 2004, revised 28 May 2005

The patent system is meant to protect technology—actual machines, devices, and new chemical compositions—rather than pure concepts. Without patents, enterprises that do not make the research and development investment needed to invent new medicines could directly copy the drug and challenge the innovator’s price, making it unfeasible for the innovator to generate funds to invest in discovering new medicines. Hence, the whole patenting process should not be prohibitive for companies but also should not accept loose principles allowing discrepancy to standards against consumers’ protection in order to allow companies to have undue profits. Biotechnology and chemistry inventions should have the same high written description standard injecting some reasonableness into the written description requirement in these regards. The main aim of the analysis is to investigate the existence of discrepancies in the standards between chemical and biotechnology patenting. The discrepancies between chemical and biotechnology patenting must be diminished in order to avoid double standards and so establishing predictability adding to the inventive prospects of firms.

Keywords: Chemical patenting, biotechnology patents, written description, best mode requirement

Journal of Intellectual Property Rights

Vol 10, July 2005, pp 300-307


Testing Parameters for Software Patentability


Arun Kishore Narasani and Kalyan Chakravarthy Kankanala

Received 19 April 2005

Patentability of computer programs is fraught with ambiguity because of multiple reasons. One such reason is the uncertainty and inadequacy of tests to determine patentability. Courts in the US have been struggling to evolve a test that would cover the complete continuum of innovation in computer programs, which manifests in terms of form or function or both. All tests adopted by the court either focus on only form or function, thus missing out the other. It is important for the legislatures and courts to understand the existing lacuna and adopt a test that would lay emphasis on form and function. The test should be modeled to allow inventions having high function or high form or both form and function in high proportion. It should keep inventions having low form and function outside the scope of patent protection. Such a model would promote progress in the entire continuum of the invention in the software field by granting patents to worthy inventions.

This paper proposes parameters for coining a reliable test for determining patentability. A test based on parameters such as form and function would encourage innovation in the software industry without stifling progress through grant of frivolous patents. The first part of the paper expounds the law relating to software in USA and India. The second part analyses the existing patentability tests in terms of importance given to form and function of computer programs and third part discusses the usage of form and function as parameters for coining a good patentability test.

Keywords: Software, computer programs, patentability , form - function - test


Journal of Intellectual Property Rights

Vol 10, July 2005, pp 308-314


Copyright Laws as a Means of Extending Protection to Expressions of Folklore

Anurag Dwivediand Monika Saroha


Received 24 September 2004, revised 24 June 2005

One of the great ironies for indigenous people and local communities is that while scientific and commercial interest in their ecological knowledge and resource management practices have never been greater, human cultural diversity is eroding at an accelerating rate as the world steadily becomes more biologically and culturally uniform. With the advent of globalization, cultural heritages of different countries have become more vulnerable to those of the rest of the world. Folklore is one such heritage for the indigenous people of one country. Intellectual property rights are meant to protect diverse heritages. This paper attempts to analyse the existing copyright laws with a view to determining their potential to extend protection to these vulnerable rights.

Keywords: Folklore, copyright, WIPO, UNESCO, Berne Convention, indigenous people



Journal of Intellectual Property Rights

Vol 10, July 2005, pp 315-320


Patenting Activities in Agriculture from India


Rekha Mittal and Gian Singh

Received 10 May 2005, revised 16 June 2005

An attempt has been made to study the trends of patenting activity in the field of agriculture with reference to India using data from various databases, such as, USPTO, EPO, PCT and Gazette of India Part III Section 2. The study covers the data from the period 1 January1995 to 31 December 2004 (WTO era), where in 415 patents exclusively related to agriculture have been taken for analysis. The study indicates the focus of research of different organizations /industries in specific areas of agriculture and highlights the important technological directions and gaps for further pursuing R&D in agriculture.

Keywords: Indian patent, agriculture, patent activity