Journal of Intellectual Property Rights

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VOLUME 14

NUMBER 4

JULY 2009

CODEN: JIPRFG 14(4) 295-380 (2009)

ISSN: 0971-7544

e-ISSN: 0975-1076

 

CONTENTS

 

Articles

 

 

 

Evergreening – A Controversial Issue in Pharma Milieu

299

        Inderjit Singh Bansal, Deeptymaya Sahu, Gautam Bakshi and Sukhjeet Singh

 

 

 

Sufficiency of Disclosure in Patent Specification

307

        Maram Suresh Gupta

 

 

 

Benefits of the London Agreement (2000) for Indian Patent Applicants

317

        Vinoth Khanna S R  and  Sudhir Ravindran

 

 

 

Striking a Balance between Liability of Internet Service Providers and Protection of Copyright over the Internet: A Need of the Hour

321

        Priyambada Mishra and Angsuman Dutta

 

 

 

Intellectual Property Protection at Border

330

        Vijay Lakshmi and Arvind M Patro

 

 

 

Challenges in Creation and Management of Knowledge Capital in Technical
Educational Institutions

340

        Babita Sinha, Himanshu Joshi and P K Ghosh

 

 

 

Opinion

 

 

 

TRIPS, WTO and IPR - How Effective is the Dispute Settlement Process?

346

        M D Nair

 

 

 

Literature Review

 

 

 

IPR―General

349

● Assignments and royalties don’t mix ● Could there be a right to own IP? ● IPR and research disclosure in the university environment ● IP, pharmaceutical MNEs and the developing world ● Strength of IP protection Promoting intellectual discovery: Patents versus markets
Societal and economic valuation of technology-transfer deals  ● R&D subsidy, IPR protection, and North-South trade ● How managers protect IPR in China using de facto strategies? ● Drivers of national innovation in transition ●Innovation, inequality and IPR ●Compensation of damages for infringements of IPR in France ● The effects of stronger IPR on technology transfer ● IPR and US information goods exports

 

 

Patents

352

The Court of Appeal clarifies the law on sufficiency ● Does strong patent protection facilitate international technology transfer? ● Trade, TRIPS and pharmaceuticals ● Modeling patent legal value by Extension Neural Network ● Restricting experimental use ● A policy insight into the R&D-patent relationship ● Patents on genes, usefulness, and the requirement of industrial application ● The role of corporate technology strategy and patent portfolios in low-, medium- and high-technology firms ● Surgeons produce innovative ideas which are frequently lost in the labyrinth of patents ● Patent duration, innovative performance, and technology diffusion ● The legacy of Myriad for gene-based diagnostics ● The impact of patents on the development of genome-based clinical diagnostics  ● The unequal benefits of academic patenting for science and engineering research ● What is behind China's recent patent explosion? ● Patent disclosure ● A thing patented is a thing divulged ● The limits to IPR standardization policies as evidenced by strategic patenting in  UMTS● Patentability of pharmaceutical products in India: The Novartis case ● Patents and haploid plants ●Patent brokers in markets for technology ● Effects of blocking patents on R&D

 

 

 

Copyright and Trademark

358

● Productivity changes of Asian economies by taking into account software piracy ● Moral rights and mortal rights in Canada ● Foreseeability and copyright incentives ● Piracy prevention and the pricing of information goods ● Sampling and scratching in US copyright and Polish law ● Image copyright protection with forward error correction ● Stalinskaya: The uneasy case of offensive trademark registration ●The Lanham Act and the trademark monopoly phobia
● Impact of brand recognition and brand reputation on firm performance

 

 

 

IPR News

 

 

 

IPR News—General

361

IP rights likely to be expanded  Lithuania joins London Agreement ● Japan, China set up working group on IPR protection ● Big firms fight for IP rights ● India must curb imitation trade ●  Uganda joins Ninth edition of Nice Classification State not to usurp Centre’s powers over IPR ● Awareness of IPR protection remains high in Hong Kong ● Global IP Index 2009

 

 

 

Patent News

364

China to use patents as loan collateral ● Experts ask govt to rectify Patents Act ● Safeguard ‘green’ patents ● Madras HC accords permission to TVS to manufacture ‘Flame’ ● JPO launches PPH Pilot Programme  

 

 

 

Copyright and Trademark News

366

●China, Canada and Spain on copyright piracy ●SCCR to expedite work in favour of reading impaired ●University of Texas System adopts annual copyright license● Software piracy drops in Jordan ● Seven million ‘use illegal files’ in UK ● Piracy reports scuttled by plagiarism claims ● Google Books copyright policy ● Google wins domain name caseCommerce Ministry to get tough with copyright piracy TRAI promises converged networks ● Obama pledges to tighten cyber security ● Flash DRM software stops IPR pirates in their tracks ● India gears up for meet on copyright issues ● HADOPI copyright law to get additional law

 

 

 

Key Patents

371

Animal model with chimeric human liver ● IP score generating method ● Method for formatting, editing, and reading electronic document ● Protective method for security algorithm ● Responder wireless emergency alerting ● Patent for PCR

 

 

 

Book Review

 

 

 

Intellectual Property and Biotechnology

374

        Matthew Rimmer

 

 

 

Competition Law and Patents

375

        Irina Haracoglou

 

 

 

Rights, Camera, Action! IP Rights and the Film-Making Process

376

        Bertrand Moullier and Richard Holmes

 

 

 

 

 

Author Index

 

Bakshi Gautam

299

Bansal Inderjit Singh

299

Dutta Angsuman

321

Ghosh P K

340

Gupta Maram Suresh

307

Joshi  Himanshu

340

Mishra Priyambada

321

Nair M D

346

Patro Aravind M

330

Ravindran Sudhir

317

Sahu Deeptymaya

299

Singh Sukhjeet

299

Sinha Babita

340

Vijay Lakshmi V

330

Vinoth Khanna S R  

317

 

 

 

Keywords

 

Copyright

321

Copyright Act

321

Counterfeit goods

330

Digital Millennium Copyright Act (DMCA)

321

Disclosure

307

European Patent Convention

317

European patents

317

Evergreening

299

Generics

299

Hatch-Waxman Act

299

Importation

330

Indian patent applicants

317

Information Technology Act

321

Infringement

321

Intellectual property

317, 330

Internet Service Providers (ISPs)

321

IP creation

340

IPR (IG) Rules

330

Knowledge economy

340

Knowledge economy index

340

London Agreement

317

Market exclusivity

299

Paroxetine

299

Patent specification

307

Patent strategy

299

Patents

317, 340

Pirated works

330

quid pro quo

307

Safe harbour protection

321

Sufficiency

307

Technical educational institutions

340

Translation costs

317

TRIPS

330

TRIPS Agreement

299

 

 

 

 

 

 

Journal of Intellectual Property Rights

Vol 14, July 2009, pp 299-306

 

 

Evergreening – A Controversial Issue in Pharma Milieu

Inderjit Singh Bansal, Deeptymaya Sahu, Gautam Bakshi and Sukhjeet Singh

Panacea Biotec Ltd, Formulation & Research Facility, Sampann R&D, Ambala - Chandigarh Highway, Lalru, Punjab 140 501

Received 18 March 2009, revised 22 June 2009

A patent is an exclusive right awarded by the intellectual property (IP) authority of a state to an inventor or his assignee for a limited period of time in lieu of disclosure of an invention for the benefit of mankind. In recent times, it has become a practice by a number of innovator companies to extend the patent term of their innovative molecules to maintain market dominance. The extension of monopoly term ‘Evergreening’ is a predominant aspect of pharmaceutical patenting. ‘Evergreening’ refers to different ways wherein patent owners take undue advantage of the law and associated regulatory processes to extend their IP monopoly particularly over highly lucrative ‘blockbuster’ drugs by filing disguised/artful patents on an already patent-protected invention shortly before expiry of the ‘parent’ patent. These artful patents tend to protect delivery profiles, packaging, derivatives, and isomeric forms, mechanism of action, dosing regimen, and dosing range, and dosing route, different methods of treatment, combinations, screening methods, biological targets and field of use for the same old molecule. This provides the innovator companies sufficient time to recoup their controversially estimated R&D costs. Patent monopolies thus should be designed to function at an optimum level wherein maximum incentive is accorded to investment in research followed by simultaneous accessibility of the protected inventions to the public. The TRIPS compliance has compelled pharma industries of the developing countries to innovate in order to cater to the requirement of current and future drugs. This paper covers different aspects of ‘evergreening’, its impact in the pharma IP domain and identifies means adopted for limiting evergreening.

   Keywords: Evergreening, TRIPS Agreement, Hatch-Waxman Act, market exclusivity, patent strategy, generics, paroxetine

 

 

Journal of Intellectual Property Rights

Vol 14, July 2009, pp 307-316

 

 

Sufficiency of Disclosure in Patent Specification

Maram Suresh Gupta

K&S Partners, #134, 60 Ft Domlur Road, Indiranagar, Bangalore 560 008, Karnataka

Received 21 April 2009, revised 11 June 2009

There is an old Latin saying ‘Do ut des’, which means give and you will be given; the principle of reciprocity. The topic of this paper is something similar to this saying. The Patent Offices invite applicants/ inventors to sufficiently disclose information pertinent to invention in a patent specification for grant of a patent. This paper highlights importance of providing sufficient information in a patent specification before filing with any Patent Office. It also analyses sections in Indian Patents Act, 1970, pertaining to ‘sufficiency of disclosure’ by citing case laws. In addition, a comparative analysis between Indian, US and European patent law towards this aspect is done. The implications of not providing information in patent specification are highlighted and certain aspects which need to be considered by applicants/ inventors before filing the invention with Patent Office are recommended.

Keywords: Sufficiency, disclosure, patent specification, quid pro quo

 

 

Journal of Intellectual Property Right

Vol 14, July 2009, pp 317-320

 

 

Benefits of the London Agreement (2000) for Indian Patent Applicants

Vinoth Khanna S R and Sudhir Ravindran

Altacit Global, Creative Enclave, III Floor,#148-150, Luz Church Road,Mylapore, Chennai 600004

Received 16 April 2009, revised 30 June 2009

The London Agreement aims to reduce translation costs required for validating European patents granted under the European Patent Convention (EPC). The EPC grants European patents for the member states of the EPC through a centralized administrative procedure. For validation of the granted European patents in each member state, entire translation of the patent is required. By reducing the compulsion to provide patent translations, the London Agreement is expected to reduce financial burden upon applicants seeking to protect their inventions in the member countries of the EPC. This article discusses effects on the European patent system and benefits for the Indian patent applicants on account of the implementation of the London Agreement (the Agreement on the application of Article 65 of the Convention on the grant of European patents).

  Keywords: European Patent Convention, European patents, London Agreement, patents, translation costs, Indian patent applicants, intellectual property

 

 

Journal of Intellectual Property Rights

Vol 14, July 2009, pp 321-329

 

 

Striking a Balance between Liability of Internet Service Providers and Protection of Copyright over the Internet: A Need of the Hour

Priyambada Mishra and Angsuman Dutta

National Law Institute University, Kerwa Dam Road, Bhopal 462 044

Received 12 March 2009, revised 7 May 2009

With the advent of ‘World Wide Web’, the Cyberspace has spread its tentacles throughout the globe bringing in its wake highly controversial issues. Despite advantages of this matrix of immense utility, the Internet poses potential threat to the Internet Service Providers (ISPs) of incurring liability for no fault of theirs. The quantum of liability of ISPs has become an important issue for the legislators of all countries. This paper limits its scope to the legal issues integrated to the much debated problem of the ‘scope of liability of ISPs for copyright infringement by third parties or subscribers’. The object of the paper is to provide a comprehensive analysis of the prevailing legislative approaches towards this issue in India and bring out loopholes in the present legal framework. The paper also suggests establishing a clear and specific ‘safe harbour protection’ for the ISPs in India by incorporating notice takedown procedures, implementing standard technical measures and by appropriate categorization of ISPs. While doing so, it analyses the laws of countries like US and Japan where legal regime is far more developed to tackle the issue in question.

The lacuna in the Indian laws must be cured so as to develop a legal system in consonance with the international order, which can combat the unforeseen anomaly of the Internet era. Furthermore, specific laws and procedures should be framed, to clear the suffocating air of critical issues, striking a balance between ISPs liability and interest of the copyright holders.

  Keywords: Internet Service Providers (ISPs), copyright, infringement, Copyright Act, Information Technology Act, Digital Millennium Copyright Act (DMCA), safe harbour protection

 

 

Journal of Intellectual Property Rights

Vol 14, July 2009, pp 330-339

 

 

Intellectual Property Protection at Border

V Vijay Lakshmi

Dr B R Ambedkar College of Law, Andhra University, Waltair, Visakhapatnam 530 003

and

Aravind M Patro

Nagarjuna University, Nagarjuna Nagar, Guntur 522 510

Received 23 February 2009, revised 2 June 2009

Protection of the property within the territory or across the border has equal significance. Laws of property are intended to protect owners of property against a variety of unlawful uses by the third parties. These laws include laws dealing with corporeal property and incorporeal or intangible property. Intellectual property comes under the later category. One of the objectives of making or manufacturing goods is trade and trade includes international trade also. In recent times, it is seen that international trade in pirated works and counterfeit goods is increasing at an alarming rate, causing substantial loss to the rights owner and the government. Thus, traditional customs laws need fortification. Similarly, intellectual property rights (IPR) dealing with copyright, patents and trademarks require introduction, substitution or amendment of new rules. These measures would enhance efficacy of existing regulations thereby enabling the authorities to arrest illegal trade across the border. This study is an analysis of the protection of IPR under the customs laws and IPR legislation. Global perspectives and the new Customs Rules of 2007 are also discussed.

Keywords: Importation, TRIPS, IPR (IG) Rules, intellectual property, counterfeit goods, pirated works

 

 

Journal of Intellectual Property Rights

Vol 14, July 2009, pp 340-345

 

 

Challenges in Creation and Management of Knowledge Capital in Technical Educational Institutions

Babita Sinha, Himanshu Joshi and P K Ghosh

IPR Cell, IIT Roorkee, Roorkee 247 667

Received 1 December 2008, revised 28 May 2009

The global knowledge economy has put the focus on local centres of economic growth and depends on the capacity of institutions and organizations to continually reinvent and reconfigure themselves and their environment. In this context, certain parameters were taken into consideration for a better understanding of how institutions deploy their core resources and competencies towards IP creation and management. This paper examines some of the challenges faced in IP creation for India and suggests approach to effectively manage the knowledge capital. In particular, the objectives of the study are assessment and identification of issues in creation of IP in technical institutions, and finding appropriate measures to address these issues.

Keywords: IP creation, knowledge economy index, knowledge economy, technical educational institutions, patents

 

 

Journal of Intellectual Property Rights

Vol 14, July 2009, pp 346-348

 

 

TRIPS, WTO and IPR - How Effective is the Dispute Settlement Process?

M D Nair

A-11, Sagarica, 15, 3rd Seaward Road, Valmiki Nagar, Thiruvanmiyur, Chennai 600 041

Received 14 June 2009

 

The World Trade Organization (WTO) was set up in 1995 and has been the custodian of all matters related to the implementation of the TRIPS Agreement endorsed by the 152 member countries.  WTO is therefore the most important body which monitors and influences working of global intellectual property rights protection in all the member countries. This issue covers effect of dispute settlement process.