Journal of Intellectual Property Rights

 

http://www.niscair.res.in

Total visitors: 953  since 11-07-07

VOLUME 12

NUMBER 4

JULY 2007

CODEN: JIPRFG 12(4) 387-466 (2007)

 

ISSN: 0971-5544

 

CONTENTS

 

Articles

 

 

Plant Variety Protection and Food Security: Lessons for Developing Countries

391

            Harbir Singh

 

 

Parallel Imports in the Pharmaceutical Sector: Must India be More Liberal?

400

            Arghya Sengupta

 

 

Application of Doctrine of Equivalents in Patent Infringement Disputes

410

            Tarun Mathur

 

 

Protection of Databases in India: Copyright Termination Sui Generis Conception

422

            Apar Gupta

 

 

IP Case Law Developments

428

            Zakir Thomas

 

 

Literature Review

 

 

IPR¾ General

 

434

· Harnessing the power of IP – Strategy and programmes of the WIPO Worldwide Academy · High cost of global IP theft · Methods of IP valuation · Access to generic antiretrovirals · Patent protection for the pharmaceutical industry and access to medicines · IPR at the crossroad between monopolization and abuse of dominant position · Interaction between IP and drug regulatory systems · True value of IP · Feminism and dualism in IP · Risk aversion and rights accretion in IPlaw · Outsourcing in healthcare industry · IP and the European Court of Human Rights · Re-evaluating declaratory judgment jurisdiction in IP disputes· Questionable use of custom in IP · IPR in advertising · Unilateral enforcement of IPR· IPR, imitation, and foreign direct investment · IPR,parallel imports and strategic behaviour · Towards a human rights framework for IP · Ten common questions about IP and human rights · IP in Indian seed markets · An overview of pharmaceutical cocrystals as IP · Legitimacy of IPR

 

 

Patents

 

440

· Patent processing: Introduction to the special issue on patent processing · Extending legal protection strategies to the service innovations area · Half a century of the Patent Documentation Group · I nterpretation of the exception under Article 53(b) of the European Patent Convention· Patent rights and human rights · Why legal methods cannot be patented ? · Role of patents in establishing global telecommunications · How organizations can protect their inventions without patenting · Most valuable patent: The use of natural phenomena in patents · A diagnosis of 13-year traditional medicinal knowledge patent experience in China · Can ‘Disclosure of Origin’ requirements in patent applications make a difference? · What is the impact of software patent shifts? What is the impact of software patent shifts? · Patent protection for Chinese herbal medicine product invention in Taiwan · Predicting citations to biotechnology patents based on the information from the patent documents· IP and patent in stem cell research era· Cardiovascular developments: Patent highlights· Recent advances in antimalarial compounds and their patents· New ocular therapeutics: A view from the patenting perspective· Problem of patent thickets in convergent technologies· Ethics of patents in clinical trials · Legal and policy implications for allowing gene patents · Foreign equivalents of the US Doctrine of Equivalents· Raceing patents/patenting race: An emerging political geography of IP in biotechnology · Towards a pluralistic theory on an efficacious patent institution · Role of patent oppositions in the struggle for access to medicines

 

 

Copyright and Trademark

 

447

· Technological protection measures and Section 1201 of the US Copyright Act · Protection of geographical indications in China · IP for the botanist and the plant breeder · C opyright & digital mismanagement chasm 

 

 

IPR News

 

 

IPR News—General

 

449

· ‘Big Five Offices’ move towards closer cooperation · European Patent chief lauds India’s important role · MoU for cooperation in IPR · Peer review project · Directive on criminal measures for the enforcement of IPR

 

 

Patent News

 

450

· World's largest patent sequence database· Revolt over pressure and lax patent rules · E-filing of international patent applications · Patent changes cut administrative costs and paperwork · Integrated patent system· Online patent auction · Single EU patent system in 5 years · Japan files most foreign patent applications in China · GM patent rejected · Changes in patent law · SMEs challenge Patent Office over software policy · Turkey's share in patent · China's progress on patent law · HIV drug patent · Indian pharma firms corner chunk of US drug approvals· Indian firms set to gain

 

 

Copyright and Trademark News

 

371

· US and China on film distribution· Internet Radio Equality Act· 12 Nations put on copyright piracy list· NCERT denies copyright

 

 

Key Patents

 

457

· Biophotonic imaging technology · Deterring abuse of Opioid · Theft free mobiles · Fingerprint-verification system · Sequential Injection Fuel Lubrication System · Wireless Internet Gateway · Macrophage inhibitory factor · Drug for HIV · Sun-powered mobile phone

 

 

Book Review

 

 

ICAR Guidelines for Intellectual Property Management and Technology

460

Transfer/Commercialization

 

 

Guide to Patents Law

461

Manish Arora

 

 

 

Author Index

 

 

Gupta Apar                                      422   

 

Mathur Tarun                                   410

 

Sengupta Arghya                              400

 

Singh Harbir                                      391   

 

Thomas Zakir                                   428


 

                                     Keyword Index

 

                     All-limitations rule                             410  

Claim infringement                             410

Database protection                           422

Doctrine of equivalents                      410  

Exhaustion of rights                           400  

Feist doctrine                                     422

File wrapper estoppel                       410

Function-way-result test                   410

Mosaicing                                          428

Novelty                                             428  

Parallel imports                                 400

Patent                                                400

Pharmaceuticals                                400

Plant breeders’ rights (PBRs)           391

Plant Variety Protection (PVP)        391

Prosecution history                          410

Substantiality of difference test        410

Sui generis                                        422

Sui generis system                           391

Sweat of the brow                            422

Trade slogan                                     428

TRIPS                                              391


 

 

Journal of Intellectual Property Rights

Vol 12, July 2007, pp 391-399

 

Plant Variety Protection and Food Security: Lessons for Developing Countries

Harbir Singh

Received 13 April 2007, revised 7 June 2007

One of the requirements of TRIPS Article 27.3(b) is that plant varieties should be protected either by patents or by an effective sui generis system or some combination thereof. The moot question is how plant variety protection could help ensure food security in developing countries? Research evidences from developed countries indicate differential impacts of plant breeders’ rights across crops. Increasing role of private sector in plant breeding was accompanied by appropriation strategies, and high level of market consolidation in seed industry resulted in higher seed prices. Though, rate of varietal release was increased but new varieties had a shorter life span. In case of developing countries, plant breeders’ rights facilitated access to improved foreign variety, in certain cases, but this contributed little to food security. Therefore, developing countries need to learn from such experiences and structure their PVP legislations in such a way which ensures food security and sustainable use of biodiversity. This could be achieved by strengthening public R&D support to agricultural research, maintaining crop genetic diversity, and developing localized seed production and delivery systems through efficient institutional mechanisms. This would go a long way towards conservation and sustainable utilization of plant genetic resources and ensuring food security at local, regional and national level. This paper contributes towards informed policy decisions to deal effectively with the possible implications of Plant Variety Protection (PVP) legislations on agriculture, particularly, on food security. At this juncture, it is difficult to quantify the magnitude of long-term impacts of PVP legislations because of lack of clear empirical evidences particularly from developing countries. However, lessons may be learnt from the working of PVP legislations in developed countries as well as from emerging evidences in developing countries. The paper draws from earlier findings to synthesize the plant variety protection implications for developing countries with particular reference to India, and outline suitable policy options.

Keywords: TRIPS, Plant Variety Protection (PVP), sui generis system, plant breeders’ rights (PBRs)

Journal of Intellectual Property Rights

Vol 12, July 2007, pp 400-409

 

Parallel Imports in the Pharmaceutical Sector: Must India be More Liberal?

Arghya Sengupta

National Law School of India University, Nagarbhavi, Bangalore 560 072

Received 23 March 2007, revised 21 June 2007

A contemporary debate in India’s legal and policy circles has centred around the desirability of liberalizing the parallel imports regime in the country. The primary impetus for such a move has been the amendment to Section 107A(b) to the Patents Act in 2005 which allows easier import of products into India which are already under patent protection. This article, focusing specifically on the pharmaceutical sector argues against the all-pervasiveness of such a move in the Indian context. To set the foundation for this argument, the article examines the leading judicial decisions in this regard in the USA and the EU in order to understand the divergent discourses, which exist supporting and opposing freeing of parallel imports. On the basis of these decisions and their applicability to the Indian context, this article proposes a nuanced policy recommendation harmonizing the financial interests of intellectual property owners with those of securing easier availability of key products.

Keywords: Exhaustion of rights, parallel imports, patent, pharmaceuticals

 

Journal of Intelletual Property Rights

Vol 12, July 2007, pp 410-421

 

Application of Doctrine of Equivalents in Patent Infringement Disputes

Tarun Mathur

Received 26 February 2007, revised 8 May 2007

Due to the emergence of fast moving technology, there are more disputes than ever, requiring the courts to carefully interpret the patent claims. In a vacuum, claim terms are of little use. They must be interpreted and given meaning so that they can be used in a given context. Various patent doctrines have been recognized as tools for creating specific patent scopes, as a result, implementing specific patent theories.

This paper evaluates and deals with scope and extent of patent claims, whenever claim infringement takes place with respect to the doctrine of equivalents (DOE). The possible mechanisms and tests as developed by the Judiciary are also discussed. The paper also examines certain limitations/bars on the applicability of the doctrine of equivalents. An attempt has been made to understand the applicability of doctrine of equivalents as highlighted by courts of various jurisdictions especially US, European and Japanese courts. The Indian context, which is largely based on UK laws, is also reviewed with reference to the latest cases in this regard. Finally, after identifying various mechanisms developed by various courts, it is concluded that as there is no settled position of law till date, it is the ripe time for the Indian courts to formulate basic parameters and principles pertaining to doctrine of equivalents in patent claim infringement disputes.

Keywords: Doctrine of equivalents, claim infringement, function-way-result test, substantiality of difference test, all-limitations rule, prosecution history, file wrapper estoppel

 

Journal of Intellectual Property Rights

Vol 12, July 2007, pp 422-427

 

Protection of Databases in India: Copyright Termination Sui Generis Conception

Apar Gupta

Received 21 February 2007, revised 14 May 2007

Historically, databases are protected under copyright laws. India, which has been a major beneficiary of electronic commerce, provides copyright protections to databases. The adequacy of these protections is analysed in this paper, which considers the developments in digital, which make most of the database manufacturers susceptible to free-rider competition. The paper aims to demonstrate that adoption of the Feist doctrine by the Indian courts leads to inequitable results. The solution which the paper advocates is the adoption of a sui generis legislation which clearly prescribes the property rights and limitations, to database creators in India.

Keywords: Database protection, Feist doctrine, sweat of the brow, sui generis

Journal of Intellectual Property Rights

Vol 12, July 2007, pp 428-433

 

IP Case Law Developments*

Zakir Thomas

Received 11 June 2007

This article attempts to summarize some of the recently reported cases on intellectual property law to enable the readers understand how the courts have applied principles of the law to actual IP disputes. The cases are chosen from the cases reported in ‘The Patents and Trade Marks Cases’, a leading case law reporter on intellectual property laws. In this article, the cases reported in the months of February and March 2007, are covered.

Keywords: Trade slogan, novelty, mosaicing