Journal of Intellectual Property Rights

 

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VOLUME 14

NUMBER 3

MAY 2009

CODEN: JIPRFG 14(3) 199-294 (2009)

ISSN: 0971-7544

 

CONTENTS

 

Articles

 

 

 

Patentability of Plants: Technical and Legal Aspects

203

            Mohammad Reza Parvin

 

 

 

The Role of Collective Bodies in Protection of Intellectual Property Rights in India

214

            P Ishwara Bhat

 

 

 

Establishing a Safeguard System for Intellectual Property Protection for Chinese Private Enterprises

226

            Wenqi Liu

 

 

 

Generic Drug Industry in India: The Counterfeit Spin

236

            Nitin Shukla and Tanushree Sangal

 

 

 

Diffusion of Climate Friendly Technologies: Can Compulsory Licensing Help?

241

            Nitya Nanda

 

 

 

IP Case Law Developments

247

            Zakir Thomas

 

 

 

Opinion

 

 

 

TRIPS, WTO and IPR - Debate on Evergreening of Patents and IPA 2005

258

            M D Nair

 

 

 

Literature Review

 

 

 

IPR―General

260

 

 

● Counting the beans: Unjust enrichment and defendant’s overhead ● Post-litigation enforcement of remedial orders ● Conditions and covenants in license contracts ● Innovation, inequality and IPR ● Warranties and covenants in IP licences ● The Economic Espionage Act Goldilocks and the Federal Dilution Standards ● The role of Administrative Law Judges within USAn alternative to the Bayh-Dole system for developed and developing nations The IP game Reforming IPR and the Bt cotton seed industry in China ● ‘Spygate’ and the legal implications ● Article 95 EC revisited ● Neo-colonial aspects of global IP protection ● Resistance is futile ● How to protect your IP rights in China

 

 

 

 

 

Patents

264

 

 

Strategies for defending international companies against US patent trolls ● Re-designing designs ● Shifting standards for patent applicants, prosecutors, and litigators ● Obvious to try, one year on ● A patent based evaluation of technological innovation capability in China ● Plain language patents ● A patent entirely and exclusively focused on an art-additive hits the validity bull’s eye ● Brulotte's continuing shadow over patent licensing ● Sacking Super Sack ● Who took my IP? ● Pre-grant patent publication and cumulative innovationThe dynamics of open science ● Revisiting the compromise of 35 USC § 287(c) ● Contributory infringement rule and patents ● Time-varying compulsory license ● US faculty patenting ● Of mice and men A policy insight into the R&D–patent relationship,Developing a systematic patent search training programme Heterogeneity of patenting activity and its implications for scientific research ● How Daiichi Sankyo v Apotex violated the Federal Patent Statute

 

 

 

Copyright and Trademark

269

 

 

The toolbox for plagiarism detectionDRM architecturesContent value chains modeling using a copyright ontology ● Protection for fashion designs under Australia's IP laws ● The video game industry culture dichotomy ● The future of inline web designing ● Trade secret prices and high-tech devices ● The search engine advertising market ● Global warming trend? ● Latin American and Spanish copyright relations Global software piracyUnderstanding plagiarism detection services as digital archives ● Trade secret licensing ● The social contract and authorshipA gloss on the substantial similarity test in music copyrights ● A quantum of originality in copyright ● Trademark arbitration ● Gray market trademark infringement actions ● Copyright and the Creative Act

 

 

 

IPR News

 

 

 

IPR News—General

274

 

 

WTO rejects US IPR claims against China ● Hong Kong more informed on IPR ● US applauds Thai property rights efforts ● Ranking of India, Pakistan and Bangladesh ● Worldwide licensing rights from IMTECH ● EU, China hold high-level forum on IPR protection ● Republic of Philippines to be penalized for cheaper drugs law ● Revamp to streamline IPR battles ● Laid-off staff stealing sensitive data ● EIPO finalizes preparation of IP draft law ● Bill for protecting IPR of Basmati passed China continues to improve record on protection of IPR ● Special 301 review highlights Euro piracy problem ● Montenegro and EPO signed extension agreement Bollywood and Hollywood together to promote and protect IPR IPRO seize ten shipments of counterfeit goods daily ● Reforms to Canada's IP rights system ● National Inventors’ Day

 

 

 

Patent News

280

 

 

● Obama patent reform will cost US jobs ● Russia cancels sale of Su-33 fighters to China ● Govt put on record 1,500 'Yogasanas'● Phones with dual SIM holdings banned in India ● Tata seeks to stop ‘nano’ copycats

 

 

 

Copyright and Trademark News

281

 

 

● New copyright centre in Beijing ● Ethiopia to trademark two more coffee brands  Music copyright to be extended to 95 years ● More Silk Street shops shut down ● Japanese copyright group under fire ● Tribe wins property rights to haka ● Sri Lanka to protect Ceylon tea European Union Agreement on fee reductions for community trademarks ● Trademark registrations hit record in 2008 ● State products await GI registration ● New Zealand Govt backs down on Internet copyright law ● Cybersquatting cases hit record in 2008● Tirupati laddu may get IPR ● China tops in trademark applications

 

 

 

Key Patents

286

 

 

● Key circuit prototyping ● Heat shock protein DNAJ ● Diagnostic cell imaging ● NS4A antagonists in hepatitis C ● Change layer ● Pipe restoration system ● Antibiotic patent in China ● Stem cell technique

 

 

 

Book Review

 

 

 

New Directions in Copyright Law, Volumes 1-6

289

            Fiona Macmillan

 

 

                    Author Index

 

Bhat P Ishwara

214

Liu Wenqi

226

Nair M D

258

Nanda Nitya

241

Parvin Mohammad Reza

203

Sangal Tanushree

236

Shukla Nitin

236

Thomas Zakir

247

 

                       Keyword Index

 

Ad interim injunction

247

Breeder’s right

203

Climate change

241

Collective bodies

214

Collective enforcement

214

Collective intellect

214

Compulsory licensing

241

Copyright

247

Copyright society

214

Counterfeit

236

Designs

247

Enforcement

226

Enterprise  

226

Farmers’ rights

214

Generic

236

Geographical indicators

214

Hybrid plants

203

International IPR regimes

241

Intellectual property management

226

Intellectual property protection

226

Patent

203, 247

Patent pool

214

Pharma

236

Plants

203

Plant variety

203

Seizure

236

Third sector organizations

214

Trademark

247

Transgenic plants

203

TRIPS

241

WHO

236

WIPO Development Agenda

241

 

 

Journal of Intellectual Property Rights

Vol 14, May 2009, pp 203-213

 

Patentability of Plants: Technical and Legal Aspects

 

Mohammad Reza Parvin

Agricultural Biotechnology Research Institute of Iran (ABRII), Intellectual Property Rights Department, Seed and Plant Institute’s Campus, Mahdasht Road, P O Box 31535-1897, Karaj, Iran

 

Received 11 March 2009, revised 1 April 2009

 

According to Article 27.3(b) of the TRIPS Agreement, Members may exclude ‘plants’ from patentability, but they shall provide for the protection of ‘plant varieties’ either by patent or by an effective sui generis system or by any combination thereof. While this study focuses on the patentability of plants, alternative protection system (Breeder’s right as a sui generis system) has not been ignored. There may be some overlap between these protection systems which need careful consideration. In view of the importance of the decision of countries to protect plant varieties, the study also gives an overview and assesses possibilities of the current patent laws and legal positions adopted by jurisprudence or doctrine particularly in the field of transgenic and hybrid plants.

 

Keywords: Plants, patent, breeder’s right, plant variety, hybrid plants, transgenic plants

 

Journal of Intellectual Property Rights

Vol 14, May 2009, pp 214-225

 

The Role of Collective Bodies in Protection of Intellectual Property Rights in India

P Ishwara Bhat

Department of Studies in Law, University of Mysore, Manasagangotri, Mysore 570 006

 

Received 30 December 2008, revised 30 March 2009

 

The communitarian dimension of intellectual property rights (IPR) calls for use of collective effort of knowledge workers in the IPR enforcement and non-exploitation of IPR owners and consumers. Collective bodies (CBs), like copyright societies, patent pools, GI associations, etc. function as social economy entities in rendering the task cheap, effective and fair. The IPR, like farmers’ rights, collective marks and geographical indications involve definite collective intellect that can be better protected by CBs. Indian profile about CBs needs to be strengthened for effective enforcement of IPR, fair resolution of community claims and advancement of knowledge. Indian law has some orientation against possible dominant position or abuse by CBs but needs clearer policies and mechanisms in order to suit the requirement of constitutional goals. Unless legal environment governing these CBs guides them in the path of good governance and fair consequence avoiding the exploitation of members and consumers, the interests of knowledge society would suffer. The present paper examines the Indian IP law’s policy on CBs’ role in protection of IPR, their working and their impact. It inquires whether the legal regime is suitable to resolve the conflict of interests between different sections of the society and attain justice? Whether they have reliable democratic structure and policy thrust to ensure transparency and accountability? Whether the claims of members and society vis-à-vis the organization are adequately protected? The paper undertakes doctrinal legal research on the topic.

 

Keywords: Collective bodies, collective intellect, collective enforcement, copyright society, patent pool, farmers’ rights, geographical indicators, third sector organizations

 

Journal of Intellectual Property Rights

Vol 14, May 2009, pp 226-235

 

Establishing a Safeguard System for Intellectual Property Protection for Chinese Private Enterprises

 

Wenqi Liu

Department of Social Science, Zhejiang Shuren University, No 19, Zhoushan East Road, Hangzhou 310 015

 

Received 16 February 2009, revised 3 May 2009

 

Chinese private enterprises have created substantial wealth in the recent years; as a result, private sector has been an important component of Chinese economy. The expedited globalization and informationization presents some challenges to Chinese private enterprises in the regime of intellectual property (IP) protection and management. As for many commercial activities, such as foreign trade, investment, merger and acquisition, IP may be of central concern for all the participants; therefore, to some extent, IP is always regarded as a crucial matter to enterprises’ survival and development. However, Chinese private enterprises seemly have not fully prepared for establishing a safeguard system for IP to date. This article first explores the problems and troubles that Chinese private enterprises have encountered in the regime of IP protection, which exist in legislation, enforcement, and enterprises’ management systems. It also analyses the elements that impede the progress of upgrading IP protection system. Finally, it proposes some suggestions to help private enterprises improve their level of IP protection respectively, from the view of enterprises, IP agents, government and local authorities.

 

Keywords: Enterprise, intellectual property protection, intellectual property management, enforcement

 

 

Journal of Intellectual Property Rights

Vol 14, May 2009, pp 236-240

 

Generic Drug Industry in India: The Counterfeit Spin

 

Nitin Shukla and Tanushree Sangal

Lex Orbis Intellectual Property Advocates and Solicitors, 709/710, Tolstoy House, Tolstoy Marg, New Delhi 110 001

 

Received 6 March 2009, revised 21 April 2009

 

Generic drugs are marketed after the expiry of patent or marketing rights of the patented drug and are available at an affordable price. The generic drugs are also approved by the respective controlling authority of a country as innovative drugs with regard to efficacy, bioavailability, etc. However, recently World Health Organization (WHO) provided a definition for ‘counterfeit drugs’ which covered generic drugs under its warp. Considering the representation from India and other South East Asian nations, WHO has put defining counterfeit drugs on hold, while agreeing to modify the same in their favour. This paper analyses various aspects of generic and counterfeit drugs and the likely impact of the WHO definition on the Indian pharmaceutical industry. It also critically evaluates recent seizures of shipments of generic drugs by EU under a WTO TRIPS regime based on the premise of free trade.

 

Keywords: Generic, counterfeit, WHO, pharma, seizure

 

Journal of Intellectual Property Rights

Vol 14, May 2009, pp 241-246

 

Diffusion of Climate Friendly Technologies: Can Compulsory Licensing Help?

 

Nitya Nanda

Centre for Global Agreements, Legislation and Trade, Resources and Global Security Division, The Energy and Resources Institute (TERI), India Habitat Centre, New Delhi 110 003

 

Received 12 March 2009, revised 30 April 2009

 

Countries often resort to compulsory licensing to promote diffusion of technologies, particularly when intellectual property rights (IPR) holder is considered to have abused its dominant position. However, use of this instrument is often difficult due to legal, political and operational problems. In this context, this paper reviews global regimes as well as national regimes in major jurisdictions, governing use of compulsory licensing. It also examines functional requirements and market conditions for compulsory licensing to work. Based on these, it concludes that the global IPR regime under the WTO needs a mechanism similar to that has been developed for pharmaceutical products, and a more flexible regime even in that, as most countries do not have domestic manufacturing capabilities, if compulsory licensing has to work for the diffusion of climate friendly technologies. However, even such a flexible mechanism may not be adequately effective due to highly concentrated market structure of these technologies, particularly in developing countries.

 

Keywords: Compulsory licensing, climate change, international IPR regimes, WIPO Development Agenda, TRIPS

 

Journal of Intellectual Property Rights

Vol 14, May 2009, pp 247-257

 

IP Case Law Developments*

 

Zakir Thomas

 

Open Source Drug Discovery (OSDD) & DG's Technical Cell, Council of Scientific and Industrial Research, Anusandhan Bhawan, 2 Rafi Marg, New Delhi 110 001

 

Received 15 April 2009

 

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. In this article, widely discussed cases on, trademark law, copyright law and patent law are covered.

 

Keywords: Patents, ad interim injunction, designs, copyright, trademark

 

*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 14, May 2009, pp 258-259

 

TRIPS, WTO and IPR - Debate on Evergreening of Patents and IPA 2005

 

M D Nair

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

 

Received 2 April 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 the
debate on evergreening of patents and IPA 2005.

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