Journal of Intellectual Property Rights

 

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VOLUME 13

NUMBER 4

JULY 2008

CODEN: JIPRFG 13(4) 289-388 (2008)

 

ISSN: 0971-5544

 

CONTENTS

 

   Articles     

 

The Software Invention Cube: A Classification Scheme for Software Inventions

293

        Jan A Bergstra and Paul Klint

 

 

Battling with TRIPS: Emerging Firm Strategies of Indian Pharmaceutical Industry Post-TRIPS

301

        Rajnish Kumar Rai

 

 

India: IPR and the National Security

318

        V K Gupta

 

 

Intellectual Property Rights, Traditional Knowledge and Biodiversity of India

326

        K Venkataraman and S Swarna Latha

 

 

Institutions and Capacity Building for the Evolution of Intellectual Property Rights Regime in India: IV — Identification and Disclosure of IP Products for their IPR Protection in Plants and Animals

336

        Sudhir Kochhar

 

 

IP Case Law Developments

344

        Zakir Thomas

 

 

Technical Notes

 

 

Patent Infringement: How to Minimize the Risk

351

  Amit Singh

 

 

Literature Review

 

 

IPR―General

 

354

● Innovativeness and IndiaIPR and TK: Biopiracy or bioprospecting? ● Integrating IPR in technical education ● Innovation, imitation and IPR ● Obstacles to European research projects with data and tissue ● IPR for developing countries: Lessons from Iran ● Import tariff, IPR protection and foreign merger ● Economic institutions and FDI location choice ● IPR protection and unemployment in a North South model ● R&D subsidy, IPR protection, and North–South trade ● Bargaining with a property rights owner ● Trade-related influences, foreign IPR and outbound international patenting Conceptualizing security exceptions ● Protecting biotechnology IPRs in developing countries ● Delivery of agricultural technology to resource-poor farmers in Africa TK and IPR ● IPR systems and the assemblage of local knowledge systems ● Promoting innovation ● The morals and order exceptions in WTO law

 

 

Patents

 

359

● The impacts of academic patenting and licensing on knowledge production and diffusion ● The genomics revolution and patenting practice ● US patent exhaustion ● Supreme Court opens courthouse door to more patent challenges ● Fences and competition in patent races ● The end of the patent duty of disclosure in Australia ● An economic analysis of strengthening patent protection in the pharmaceutical industry ● A landmark pharma patent victory in Japan ● The Iranian patent reform ● Duration of patent protection ● The impact of compulsory licensing on FDI ● Patents, research exemption, and the incentive for sequential innovation

 

 

Copyright and Trademark

 

363

● Plagiarism and its impact on the economics profession ● Nokia v IDCGI and competitive provision of quality in agricultural markets ● Trademark sales, entry, and value of reputation ● 12 P&G v Reckitt Benckiser decisions help explain registered community designs ● A secure and traceable E-DRM system based on mobile device ● Commercial piracy and IP policy ● Why America needs a European fashion police? ● Attractions of suspending TRIPS obligations ● Trademarks: Not just for the rich and famous ● Legal questions about illegal art ● Sequential versus Simultaneous market delineation ● The antitrust assessment of loyalty discounts and rebates ● Cybersquatting: Prevention better than cure? ● Teaching global cyberlaw

 

 

IPR News

 

 

IPR News—General

 

369

● China's accession into WTO has been a great success ● IP Office in Montenegro opened UK-IPO Corporate Plan ● UN IP agency welcomes move on industrial design pact ● EU and CARIFORUM countries to deepen integration in IPR ● China launches industrial IPR strategy trial ● Chinese new national strategy on IPR protection ● Ongoing IP piracy in Russia raises concerns ● Protection of IPR for growth of Pakistani industries ● UN to help indigenous communities to preserve cultural heritage ● WHO reports progress on IP issues ● IPR (Imported Goods) Enforcement Rules, 2007 ● Great opportunity for India to step up creative goods ● Kerala Cabinet nods for draft IPRs policy on traditional knowledge ● India seeks TRIPS to bio-piracy ● 100 patents, trademarks and copyrights aimed in one year Indian drug firms wary of global customs normsPuneri pagdi may become IP of city ● Microchips with multiple ‘personalities’ may protect IP

 

 

Patent News

 

377

India lags behind China by ten years with respect to patent application filings ● CSIR’s polymer gets US patent Planning Commission proposes project to take patent data online Patent offices come under lens

 

 

Copyright and Trademark News

 

379

● China established a formal copyright association ● Government of Canada proposes update to copyright law ● US keeps Philippines on list of copyright violators ● International Reggae Day ● New law endangers copyright Rakesh Roshan settles copyright dispute Copyright Board to decide on royalty rates India: IPRS v Kolkata Knight Riders Yahoo sued by Indian music company for copyright infringement Yamaha wins intellectual property lawsuit Adidas wins 305 million dollars as damages Tirupati laddu of India to get GI status

 

 

Key Patents

 

383

● Patents for breakthrough design ● Patent relating to spintronics ● Key video compression technology patented ● Patents for embryonic cells and cell lines ● Cipla gets patent for Nexium, Fosamax modified versions ● HDL selective de-lipidation patent

 

 

Book Review

 

 

Ambush Marketing: Game Within A Game

385

            Arul George Scaria

 

 

 

 

 

AUTHOR INDEX

Bergstra Jan A 293
Gupta V K 318
Klint Paul 293
Kochhar Sudhir 336
Latha S Swarna 326
Rai Rajnish Kumar 301
Singh Amit 351
Thomas Zakir 344
Venkataraman K 326

                             

 KEYWORD INDEX

Atomic Energy Act 318
Biodiversity 326
Business strategies 301
Concept notes 344
Confidential information 344
Conservation 326
Copyright 344
Cross licensing 351
Defence R & D 318
Dual use inventions 318
Economic significance 344
Freedom to operate 351
Geographical Indications 336
GI 336
Indian pharmaceutical industry 301
In-licensing  351
Inventive step 344
IPR 326, 336
IPR laws 318
IPR on software 293
Literary works 344
National security 318
NBA 326
Obviousness 344
Patent infringement insurance 351
Patent infringement issues 351
Patent pool 351
Patents 344
PPV&FR 336
R&D 301
Software engineering lifecycle 293
Software inventions 293
Software patents 293
Sui generis 336
Traditional knowledge 326
TRIPS 301

 

Journal of Intellectual Property Rights

Vol 13, July 2008, pp 293-300

 

The Software Invention Cube: A Classification Scheme for Software Inventions

Jan A Bergstra

and

Paul Klint

Received 3 July 2007, revised 7 June 2008

The patent system protects inventions. The requirement that a software invention should make ‘a technical contribution’ turns out to be untenable in practice and this raises the question, what constitutes an invention in the realm of software. The authors developed the Software Invention Cube (SWIC), a classification of software inventions and used this classification to explore the meaning of the notions ‘novelty’, ‘inventive step’ and ‘someone skilled in the art’ for software inventions. They came to the conclusion that no meaningful distinction can be made between software invention and software discovery, which is crucial in patent law. They also showed that only in very few cases copyright is an alternative for patents to protect software inventions. In their analysis they made a distinction between ‘software inventionism’ (the point of view that software inventions per se can exist and precede any patenting or any other form of protection) and the techno-political decisions that can be combined with it. The result is a framework that enables reasoning about the software inventions and their potential protection. Hence, the question of what constitutes a software invention and the desirability to protect such an invention in any way is completely decoupled.

This paper is a sequel to the previous paper1 in which a proposal was formulated for an IPR-based software engineering life cycle and it was argued that only when an IPR-based software engineering life cycle is used a rational strategy towards software patenting, software patent licensing as well as IPR defense is possible. Further, an extensive discussion was given regarding the problem of so-called trivial patents. These seem to undermine the vitality and usefulness of the software patenting system. A number of examples of patents and patent applications that may be considered trivial were given. Long term strategies were discussed to remove trivial patents from the scene. Further, a research agenda consisting of a number of promising research questions concerning software patenting was worked out in significant detail and several policy recommendations were made.

Keywords: Software inventions, software engineering lifecycle, software patents, IPR on software

 

 

Journal of Intellectual Property Rights

Vol 13, July 2008, pp 301-317

 

Battling with TRIPS: Emerging Firm Strategies of Indian
Pharmaceutical Industry Post-TRIPS

 

Rajnish Kumar Rai

Received 14 February 2008, revised 11 June 2008

The full scale compliance of TRIPS Agreement essentially represents a big step in the opposite direction as it effectively ended more than three decades of protection for Indian companies and terminated legal ‘reverse engineering’. The new patent regime throws a new challenge to the Indian pharmaceutical industry to maintain its competitiveness and profitability. This study investigates emerging firm strategies of the Indian pharmaceutical companies to overcome the challenge posed by new patent regime. The study concludes that the industry is witnessing a transition phase, and is undergoing consolidation and restructuring. The industry is adopting a mix of competitive and collaborative business and R&D strategies in the emerging business environment.

Keywords: TRIPS, Indian pharmaceutical industry, business strategies, R&D

 

 

Journal of Intellectual Property Rights

Vol 13, July 2008, pp 318-325

 

India: IPR and the National Security

V K Gupta

Received 21 May 2008, revised 4 July 2008

The paper highlights intellectual property rights (IPR) issues related to defence and national security in the Indian context, for example, management of IPR during defence R&D and technology development, protection of IPR of strategic nuclear and dual use technologies and applications, negotiating patents and other IPR during acquisition of military equipment and technologies, and counterfeiting and piracy of legally owned intellectual property. The emerging non-nuclear commercial applications of some of the ‘prescribed’ substances in the Atomic Energy Act of 1962 like uranium, thorium, titanium, zirconium, graphite, or radioactive isotopes have been discussed. The paper stresses the need for resolving IP related issues, particularly, for dual-use materials and systems by evolving an appropriate IPR policy. It points out significance of IPR in defence acquisition procedures and implementation and risks to internal national security from piracy of trademarked or copyrighted or patented products. India may have to act against such a piracy and crack down on intellectual property theft as part of response to the new set of national security challenges.

Keywords: IPR laws, national security, dual use inventions, Atomic Energy Act, defence R& D

 

 

Journal of Intellectual Property Rights

Vol. 13, July 2008, pp 326-335

 

Intellectual Property Rights, Traditional Knowledge and Biodiversity of India

K Venkataraman

and

S Swarna Latha

Received 3 March 2008, revised 2 June 2008

India is one of the mega-biodiverse countries with different combinations of ecosystems. The biodiversity of India occurs at three levels, namely, species, genetic and ecosystem and most of the times are associated with traditional knowledge and practices. The loss of biodiversity and commercialization of bioresources and associated knowledge have been causing great concern especially when the IPRs are applied to claim monopoly. The negotiations at international and national level for the protection of traditional knowledge and for the conservation of biological resources are now carried out on various issues of implementing the Convention on Biological Diversity (CBD), 1992. India being a party to the Convention is the first to implement it by enacting the Biological Diversity Act, 2002 with a three tired institutional mechanism established there under. However, the Act still needs more clarifications on the issues of implementation like benefit sharing. This article analyses and clarifies some of these issues and concerns and thus, suggests further actions for the effective implementation of the Act.

Keywords: Biodiversity, traditional knowledge, IPR, conservation, NBA

 

 

Journal of Intellectual Property Rights

Vol 13, July 2008, pp 336-343

 

Institutions and Capacity Building for the Evolution of Intellectual Property Rights Regime in India: IV– Identification and Disclosure of IP Products for their IPR Protection in Plants and Animals*

Sudhir Kochhar

Received 16 June 2008

The recognition that plants and animals can provide commercial opportunities in agriculture and industry, and their inclusion as patentable subject matter in the TRIPS Agreement necessitates finer analyses and understanding of IPR protection of plants and animals and their products in agriculture. This paper attempts to analyse the scenario of a possible dual protection of indigenous plants and animals including farmers’ varieties under the sui generis IPR protection as varieties/breeds on the one hand and the geographical indications on the other hand.

Keywords: IPR, sui generis, geographical indications, GI, PPV&FR

 

*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; skochhar2000@hotmail.com

 

 

Journal of Intellectual Property Rights

Vol. 13, July 2008, pp 344-350

 

IP Case Law Developments*

Zakir Thomas

Received 27 June 2008

This article attempts to summarize some of the recently reported cases on intellectual property law to enable  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 the March 2008 issue of the Patents and Trade Marks Cases (PTC), a leading case law reporter on intellectual property laws.

Keywords: Copyright, confidential information, literary works, concept notes, patents, inventive step, economic significance, obviousness.

*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

 

 

Journal of Intellectual Property Rights

Vol 13, July 2008, pp 351-353

 

Patent Infringement: How to Minimize the Risk

Amit Singh

Received 2 November 2007, revised 3 June 2008

It is well known that research based pharmaceutical companies invest heavily in research and development (R&D) of new chemical entities. Therefore, it is inevitable that with respect to development and/or launch of a new product or process without proper pre-emptive steps, unintentional infringement of intellectual property rights (IPR) can cause heavy losses. Such infringement will not only have impact on sales and revenue generation but also cause massive damage to the customer’s confidence and ultimately reputation of manufacturers. This article analyses basic and most pertinent question to be answered i.e. what measures should be taken to minimize the risk factor associated with the patent infringement issues?

Keywords: Patent infringement issues, patent infringement insurance, freedom to operate, in-licensing, patent pool, cross licensing