Journal of Intellectual Property Rights

 

http://www.niscair.res.in

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VOLUME 13

NUMBER 1

JANUARY 2008

CODEN: JIPRFG 13(1) 1-102 (2008)

 

ISSN: 0971-5544

 

CONTENTS

 

Articles

 

 

Concept of Obviousness: Scenario post KSR International v Teleflex Inc

7

        Ashish Pareek and Shivendra Singh

 

 

Comparative Advertising: An Eye for an Eye Making the Consumer’s Blind

19

        Rajat Mittal and Aishwarya Singh

 

 

Facets of Technology Transfer: A Perspective of Pharmaceutical Industry

28

        Manthan D Janodia, D Sreedhar, Virendra S Ligade, Ajay Pise and Udupa N

 

 

Challenges to Copyrightable Work in Cyberspace

35

        Subhasis Saha and Sourav Keshri

 

 

Registration of Non-Traditional Trademarks

43

Neha Mishra

 

 

Institutions and Capacity Building for the Evolution of IPR Regime in India: Protection of Plant Varieties and Farmer’s Rights

51

            Sudhir Kochhar

 

 

IP Case Law Developments

58

            Zakir Thomas

 

 

 

Literature Review

 

 

 

IPR―General

65

 

 

● IP piracy: Perception and reality in China, US, and elsewhere ● A north–south model of IPR protection and skill accumulation ● In search of a useful theory of the productive potential of IPR ● Endogenous strength of IPR: ● Understanding developing country resistance to the Doha Round ● The evolution of IP provisions in US FTA and access to medicine ● Extracting rents based on IP monopolies ● Chinese IPR? ● The technical writer's role in preserving IPR outside US tutorial ● IP protection in a combined academic and private enterprise collaborative environment ● The effects of stronger IPR on technology transfer ● The expansion and restructuring of IP and its implications for the developing world ● A proposal for a new unified test for the experimental use exception to § 102(b) ● Patents and trade secrets form the heart of an effective IP strategy

 

 

Patents

 

68

The ‘first-to-file’ patent system ● Application of the patent marking statute to websites and the Internet ● The use of natural phenomena in patents ● Patents and enantiomers ● The high cost of global IP theft ● A budding theory of willful patent infringement Vital parameters for patent morality ● Strategies for the production and diffusion of patented medicines under the amended TRIPS provisions ● Patents as credence goods ● Patent protection for computer programs in IndiaA comment on amending India's Patent Act ● Co-ownership of patents under German law ● Why the presumption against extraterritorial application of US patent law should limit the reach of 35 USC ? 271(f) ● A consideration of business method patents in Australia and Europe ● Patentability issues surrounding antiviralsNeglected diseases patent sense ● Domestic contours of global regulation ● How can patent holders protect themselves from medimmune?

 

 

Copyright and Trademark

 

74

● A probability theory of copyrightable creativity ● Where will consumers find privacy protection from RFIDs? ● Harry Potter and the (re)order of the artists ● Shielding farmers’ rights ● Is kelly shifting under google's feet? ● Integrated copyright protection in Peer-to-Peer networks ● A case against extraterritoriality of trademark law Protection of shapes and colour marks in Canada ● The copyright & digital mismanagement chasm ● The US and future of Internet governance ● Polygraph in trade secret litigation Reflections on copyright, the first amendment and google’s use of others’ contents ● Fleeting fame under the Trademark Dilution Revision Act of 2006

 

 

IPR News

 

 

IPR News—General

 

78

IPR museum opens ● China accepts WTO amendment to enhance access to drugs ● WTO biodiversity amendment backed ● Seminars for women on IPR ● Kosovo IP Office opens ● UN patent chief: Golden handshake ● IP trial time halved ● South Africa: India and Brazil ● Taiwan signs MoU with Philippines on IP ● US-Peru trade deal ● IP and access to medicines ● TRIPS Council extends health amendment ● French law on the enforcement of IPR ● China needs 60,000 IPR experts by 2010 ● EU acceptance of TRIPS Health Amendment ● Azerbaijan: Legislative reform plan ● Custom department secures IPR of international brands

 

 

Patent News

 

85

New patent regulations provide opportunities ● Taiwan to revoke China’s patent ● Patent legislation to be modified ● Regional approach for patents needed in Southeast Asia ● Patent rule change to aid biodiversity protection ● Global campaign vows to fight MNC drug monopoly ● Indonesia mulls compulsory licences ● Will something be lost in the translation? ● Apple settles patent infringement case Patent office claims record productivity levels ● US adopts new rules for patent examination

 

 

Copyright and Trademark News

 

90

● NPA cracks down on IPR violations ● WTO launches probe on China distribution ●US molds changes to Lebanon’s copyright laws ● Harry Potter and the IP lawsuit ● China withholding cooperation on copyright protection ● Top economies to negotiate anti-counterfeiting trade pact ● The UK’s Copyright (Visually Impaired Persons) Act, 2002 ● Copyright notices to ISPs ● Bill targets copyright laws ● Legal protection of designs of vehicle replacement parts

 

 

Key Patents

 

93

● GPS technology patents ● Tata Motors seeks patent protection for car ● ‘Green’ patent
● Nokia patents ● Indian product patents ● ‘TIPS’ clean coal process ● Communication session encryption and authentication system ● Japanese patent for Delcath System

 

 

Book Review

 

 

Genetic Patent Law and Strategy

96

            Kalyan C Kankanala

 

 

Intellectual Property: The Many Facets of the Public Domain

97

            edited by Charlotte Waelde and MacQueen Hector

 

 

 

 

 

 

AUTHOR INDEX

 

Janodia Manthan D                                       28

Keshri Sourav                                                35

Kochhar Sudhir                                              51

Ligade Virendra S                                           28

Mishra Neha                                                  43

Mittal Rajat                                                   19

Pareek Ashish                                                  7

Pise Ajay                                                       28

Saha Subhasis                                                35

Singh Aishwarya                                           19

Singh Shivendra                                               7

Sreedhar D                                                     28

Thomas Zakir                                                57

Udupa N                                                        28

 

                       KEYWORD INDEX

Advertiser                                                   19

CBD                                                            51

Common sense                                              7

Comparative advertising                             19

Competitor                                                 19

Consumer                                                    19

Copyright                                                   57

Copyrightable work                                    35

Corrective advertising                                 19

Cyberspace                                                 35

Distinctive trademark                                 43

Domain names                                            35

Early neutral evaluation                              58

Functional trademark                                  43

Forum convenience                                     57

Graham factors                                             7

Graphical representation                            43

Jurisdiction                                                 58

Hindsight bias                                               7

Infringement                                                57

Injunction                                              19, 57

Institutional capacity building                    51

Intellectual property                                   28

IPR regime                                                  51

Liability                                                      35

Licensing                                                     28

Napster                                                       35

Non-obviousness                                          7

Non-traditional trademark                          43

Patents                                                        57

PPV & FR Act of India                              51

PPV & FR Authority                                 51

Process patents                                           57

Registrability                                              43

Registration                                                 43

Reproduction rights                                    35

Research and development                         28

Secondary meaning                                     43

Synergism test                                              7

Technology development                           28

Technology transfer                                    28

Trademark                                                   19

Trademarks                                                 57

Trademarks Registry Office                       43

TRIPS Agreement                                       51

TSM test                                                      7

UPOV                                                         51

 

 

Journal of Intellectual Property Rights

Vol 13, January 2008, pp 7-18

 

Concept of Obviousness: Scenario post KSR International v Teleflex Inc

Ashish Pareek and Shivendra Singh

Received 16 July 2007, revised 3 December 2007

‘Non-obviousness’ is a fundamental requirement of patentability under all patent jurisdictions across the globe. The paper maps the evolution of ‘obviousness’ as a concept under the US patent law. It then ventures into implications of the much awaited ruling of the US Supreme Court in KSR International Co v Teleflex Inc which has dynamized the known principles and the validity of pre-existing tests for the determination of ‘non-obviousness’ of patent claims. In US, the law was thought to have settled after Graham v John Deere but the Federal Circuit Court in the 1980s relied upon the TSM test which, although flayed by critics, made the entire process more certain, accurate and practically advantageous. The impetus of the paper is to make a case in favour of the TSM test, which the Court, however did not expressly reject, yet sidelined by showing its reluctance towards its application. The latest ruling of the Court reverts back to the Graham factors and further adds a number of abstract ‘secondary considerations’ like common sense, effects of the market demand, objective reach of the claim etc. which ask for overwide discretion and subjectivity in the process.

Keywords: Non-obviousness, TSM test, hindsight bias, common sense, Graham factors, Synergism test

Journal of Intellectual Property Rights

Vol 13, January 2008, pp 19-27

 

Comparative Advertising: An Eye for an Eye Making the Consumers Blind

rajat Mittal and Aishwarya Singh

Received 29 August 2007, revised 13 December 2007

Healthy competition has the effect of bringing development. However, it turns ugly when it leads to downfall. Comparative advertising when used with mala fide intention and rancor in the market would only bring down the good product so as to mislead the consumers into buying the wrong products. In India, comparative advertising is rampant, ironically, with utter consternation; one has to accede to the fact that its laws are very bleak and superficial in India. This article throws light upon the legal structure of India with respect to comparative advertising. The article aspires for India’s acknowledgement to its callosity regarding the legal backbone of comparative advertising.

The article further accentuates upon what reforms need to be imbibed in the field of comparative advertising and over strides any other mundane article by elaborating upon what lessons can be learnt from other developed nations in order to see ourselves as the ruling market in the world.

Keywords: Comparative advertising, injunction, corrective advertising, consumer, advertiser, competitor, trademark

 

Journal of Intellectual Property Rights

Vol 13, January 2008, pp 28-34

 

Facets of Technology Transfer: A Perspective of Pharmaceutical Industry

Manthan D Janodia, D Sreedhar, Virendra S Ligade, Ajay Pise, Udupa N

Received 7 August 2007, revised 16 November 2007

Intellectual property is an important aspect for country’s technological, economical and social development. It is observed that normally technologies are created in developed countries and benefits of these technologies are not spilled over to people in the developing countries. It is essential to make these technologies easily and economically available to people in developing countries. Technology transfer is thus an important aspect in making these technologies available to developing countries. By transferring technologies, firms can recoup a substantial portion of investment. Government, industry and academia can join hands in developing and distributing technologies to all the stakeholders. Licensing
(in-licensing and out-licensing) is one such phenomenon of technology transfer that has gained momentum in pharmaceutical industry whereby pharma companies can contribute to research and development. This article identifies some aspects of technology transfer that is shaping pharmaceutical industry and its research and development activities to meet the newer challenges and some relevant examples of technology transfer in pharmaceutical industry.

Keywords: Technology transfer, intellectual property, technology development, research and development, licensing

 

Journal of Intellectual Property Rights

Vol 13, January 2008, pp 35-42

 

Challenges to Copyrightable Work in Cyberspace

 

Subhasis Saha and Sourav Keshri

Received 24 August 2007, revised 6 December 2007

Copyright has a direct relation to the sphere of cyber space. The Internet poses a large number of problems in the area of copyright protection. These challenges and the problems posed before us have to be tackled with due care and diligence, taking into consideration the situation prevailing in the era of Napster and beyond. The paper discusses the (i) meaning of cyber space, and position of Internet related problem in India, (ii) basic challenges with respect to the intellectual property, (iii) position as to why copyright is ill-equipped to deal with Internet, along with the basic problems of copyright in regard to Internet which includes determination of public and private use and the enforcement of liability, (iv) The Indian scene in regard to jurisdiction in cyberspace and finally (v) the future of copyright.

Keywords: Copyrightable work, cyberspace, Napster, liability, reproduction rights, domain names

Journal of Intellectual Property Rights

Vol 13, January 2008, pp 43-50

 

Registration of Non-Traditional Trademarks

Neha Mishra

Received 27 July 2007, revised 22 November 2007

The paper deals with the issue of registrability of various non-traditional trademarks. Non-traditional trademarks include sound marks, odour marks, colour marks, shapes and taste marks. The paper examines the question of registrability of different types of non-traditional trademarks in different jurisdictions like US and EU by referring to landmark cases and provisions in their respective legislations. Some of the interesting cases that have been discussed include the Harley-Davison case, Sieckmann case, Shield Mark case, etc. Presently, there is no law governing non-traditional trademarks exclusively, in India. In the light of European Court of Justice (ECJ) jurisprudence and the law evolved by US courts, the author has tried to draw a picture of the future of non-traditional trademarks in India and analysed whether it could be registered or not. Reference is made to the prevailing Trademarks Act in India and the Rules framed under it. The paper also identifies reasons why non-traditional trademarks especially in case of unconventional sound marks, taste marks, odour marks, etc. might not get adequate acceptability as registered trademarks in the Indian Trademarks Registry Office.

Keywords: Non-traditional trademark, registration, registrability, graphical representation, Trademarks Registry Office, distinctive trademark, functional trademark, secondary meaning.


Journal of Intellectual Property Rights

Vol 13, January 2008, pp 51-56

Institutions and Capacity Building for the Evolution of IPR Regime
in India: Protection of Plant Varieties and Farmers’ Rights*

Sudhir Kochhar

Received 7 January 2008

One of the primary steps towards the development and evolution of the national IPR regime could be building the institutions and capacity in various fields related to the IPR area, such as, research and development, enterprise, industry, general administration, and judiciary. A harmonious, efficient and effective institutional mechanism for building capacity and trained human resource would be desirable so to derive full advantage of the Indian IPR regime. There are five central ministries/departments besides two national authorities that oversee the implementation of various IPR legislations in the country. The largest nodal point is the Intellectual Property India, administered by the Patent Office and controlled by the Ministry of Commerce and Industry. The Protection of Plant Varieties and Farmers’ Rights in the country is at a juvenile stage and requires building its institutional mechanism and capacity. This paper discusses various issues and priorities related to this legislation with an urge to develop/enhance linkages and working relations between the PPV&FR Authority/ Registry and Intellectual Property India as well as other nodal agencies/R&D organizations.

Keywords: IPR regime, PPV&FR Authority, CBD, TRIPS Agreement, PPV&FR Act of India, UPOV, Institutional and capacity building

*The feedback regarding the series of this article can be sent to the editor, Madhu Sahni (email: sahnim@niscair.res.in) or to the author:  skochhar.icar@nic.in

 

 

Journal of Intellectual Property Rights

Vol 13, January 2008, pp 57-64

 

IP Case Law Developments*

 

Zakir Thomas

Received 28 December 2007

This article attempts to summarize some of the recently reported cases on intellectual property law to enable the readers to understand how the courts have applied the principles of intellectual property law to actual IP disputes. The cases are chosen from the cases reported in September and October 2007 issues of the Patents and Trade Marks Cases (PTC), a leading case law reporter on intellectual property laws.

Keywords: Patents, process patents, infringement, injunction, jurisdiction, forum conveniens, copyright, trademarks, early neutral evaluation

 

*The feedback regarding this column can be sent to the editor, Madhu Sahni (email: sahnim@niscair.res.in) or to the author: zthomas@piercelaw.edu