Journal of Intellectual Property Rights

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VOLUME 14

NUMBER 5

SEPTEMBER 2009

CODEN: JIPRFG 14(5) 381-482 (2009)

ISSN: 0971-7544

e-ISSN: 0975-1076

 

CONTENTS

 

Articles

 

Section 3(d): ‘New’ Indian Perspective

385

      Aditya Kant

 

 

 

Trademark Licensing & Franchising: Trends in Transfer of Rights

397

      Vernika Tomar

 

 

 

The TRIPS Article 23 Extension Stalemate Continues: A Way-Ahead for the Developing Countries

405

      Rajnish Kumar Rai

 

 

 

Patent Specification: Engineering the Technical Output of Novel Invention

423

      Anjana Baruah

 

 

 

Impact of Patents on Indian Pharma Industry’s Growth and Competency: A Viewpoint of Pharmaceutical Companies in India

432

      Manthan D Janodia, J Venkata Rao, Sureshwar Pandey, D Sreedhar, Virendra S Ligade and
N Udupa

 

 

 

IP Case Law Developments

437

      Zakir Thomas

 

 

 

Opinion

 

TRIPS, WTO and IPR – DOHA Round & Public Health

446

      M D Nair

 

 

 

Literature Review

 

IPR―General

448

● IP-based economic developments in Malaysia ● Ex ante analysis of the benefits of transgenic research on cereal crops ● IPR driving industry restructuring and firm modification ● The crash of knowledge economy ● Non-repudiation protocol for secure negotiation and contract signing ● Developing nations and the compulsory license ● Securitization of patents and trademarks ● Law and the boundaries of technology-intensive firms ● IPR, technology transfer and exports in developing countries ● Extension of market exclusivity and its impact on the accessibility to essential medicines, and drug expense in Thailand ● Provision of global public goods ● Integrated platform of collaborative project management and silicon IP management for IC design industry ● Alternative damage rules and probabilistic IP rights ● Institutions and the R&D of GM-crops ● On welfare reducing technological change in a North-South framework ● Multilateralizing TRIPS-Plus Agreements ● Property rights protection and corporate R&D in China ● Protection of public interests through a human rights framework in the TRIPS Agreement ● China, the ‘IP Black Hole’ hosts the XXIX Olympiad ● Intellectual property (IP) protection v IP abuses ● Symbiotic relationship between global contracts and international IP regime ● Protection of IP based on a skeleton model in product design collaborationIntellectual capital and new product development performance ● Aggressive regionalism in Korea-US FTA Trade versus Culture in the Digital EnvironmentInducing breach of contract, conversion and contract as property

 

Patents

455

● Discovering new technology opportunities ● The future of PATLIB centres in a globalized patent world ● The case for preferring patent-validity litigation over second-window review and gold-plated patents ● Patenting pharmaceutical inventions on second medical uses in Brazil ● Reinventing discovery ● The problems with patents ● The Implications of India's amended patent regime ● Pioneering inventors or thicket builders ● Can product-by-process patent claims provide protection for modernized Chinese herbal medicine ● The text, the full text and nothing but the text ● Patent laws and innovation in China

 

 

 

Copyright and Trademark

458

● May authorship go objective ● Copyright protection for computer programs in South Africa ● Ontology-based data mining approach implemented on exploring product and brand spectrum ● A robust software watermarking for copyright protection ● How do copyrights affect economic development and international trade ● Service-oriented grid computing system for GC-DRM ● Copyright enforcement and product quality signaling in markets for computer software ● The author as agent of information policy ● The reform of Article 82 and the operation of competition principles upon the normal trading functions of copyright collecting societies ● Recent developments in India's plant variety protection, seed regulation and linkages with UPOV's proposed membership ● What can we learn from empirical studies about piracy? ● The software slump ● Knowledge based resources, property based resources and supplier bargaining power in Hollywood motion picture projects ● Reflecting on the common discourse on piracy and IPR ● DFT-Based SoC/VLSI IP Protection and DRM Platform

 

 

 

IPR News

 

IPR News—General

463

● US trains Nigeria Customs on IP enforcement ● Kazakhstan harmonizing its laws on IP with international norms ● Duplicate Titan Sonata watches seized ● India will not accept any change in approach to Doha talks ● Intellectual Bill ‘an abomination’ ● India prepares EU trade complaint

 

 

 

Patent News

465

● Novartis’ cancer drug ● Patent for dual-sim mobile suspended ● Ireland overhauls patent rules ● India granted 3,500 Pharma patents ● Anna University IPR centre files 53 patents ● 18,230 patents in 2008-09 ● DRDO registers jump in filing patents ● India loses 2000 patents every year in US ● IT firms speed up patent filing ● Google's personalized search challenged ● India heads high on neem patent ● Warning on patents for flu drugs ● China's SMIC tops in wafer foundry patents ● Minister urges firms to pool HIV patents ● Finland, US will use PPH ● China adopts Third Amendment to Patent Law ● Patent Office adopts new process ● Compensation for outstanding invention ● Green patent survey

 

 

 

Copyright and Trademark News

473

● China battles against counterfeiting ● Bahamas committed to copyright protection ● Plagiarism row ● Madras HC orders status quo on copyright case ● Reprinting of ‘Mein Kampf’ ● Stiff penalties for software pirates in new Copyright Law ● Copyright Board commences hearings on royalty issue ● Bill extends copyright protection to news

 

 

 

Key Patents

475

● PLC Medical Systems wins Canadian patent ● Patents to NaturalNano ● Patents covering Oncotype DX Technology ● Patent on Polymer Technology ● Combating obesity with appetite-suppressing chewing gum ● Patents on leaching ● Patent for labeling of proteins

 

 

 

Book Review

 

Intellectual Property and Human Rights, Enhanced Edition of Copyright and Human Rights

478

      Edited by Paul L C Torremans

 

 

 

Rethinking Copyright – History, Theory, Language

479

      Ronan Deazley

 

 

 

Author Index

 

Aditya Kant

385

Baruah Anjana

423

Janodia Manthan D

432

Nair M D

446

Pandey Sureshwar

432

Rai Rajnish Kumar

405

Rao J Venkata

432

Sreedhar D

432

Thomas Zakir

437

Tomar Vernika

397

Udupa N

432

Virendra S Ligad

432

Udupa N

432

 

 

 

 Keyword Index

Ad interim injunction
437
Competition law
397
Complete specification
423
Contents of specification
423
Copyright
437
Disclosure
423
Ever-greening
385
Free riding
405
Generics
385
GI
405
GI-extension
405
IPR department
432
Patents
437
Patent busting
385
Patent eligibility
385
Patent statute
423
Pharmaceutical companies
385
Pharmaceutical industry
432
Policy levers
385
POSITA
385
Pre-grant opposition
437
Prior art search
423
Product patent
432
Public interest
437
Quality control
397
R&D
432
Section 3(d)
385
Source indication
397
Source theory
397
Statement of invention
423
Trademark franchising
397
Trademark licensing
397
TRIPS
432
TRIPS Agreement
405
Written description
423

Udupa N

432


                       

 

 

Journal of Intellectual Property Rights

Vol 14, September 2009, pp 385-396

 

Section 3(d): ‘New’ Indian Perspective

Aditya Kant

New Delhi Chambers of Law, 1st Floor, 6, Babar Lane, Bengali Market, New Delhi 110 001

Received 18 May 2009, revised 17 July 2009

Instead of the theoretical approach, this article attempts to visit the famed Section 3(d) of the Indian Patents Act from a practical viewpoint. Examining the relevance and actual working of this Section in the Indian context, this article not only emphasizes the need to retain it, albeit in a modified form, but it also attempts to strike a balance between the competing, and seemingly conflicting interests of various ‘interest groups’ and their ideologies of various shades at different levels, viz. national v internationalism, under-developed/undeveloped/developing nations v developed nations, generics v innovators, Indian companies v MNCs, public interest v commercial interest, socialistic policies of a welfare state v capitalism, etc. While still advocating for its (modified) existence, this article does not restrict its advocacy to narrow traditional jingoism; rather, it urges the Indian stakeholders, especially the Indian companies and the Indian Government to use this nobly-intended provision as an ‘opportunity’ to transform itself from the ‘inventing around’ players to the ‘inventing’ players, thereby enabling the nation as a whole to catapult itself into the big world pharmaceutical league. For the protection of incremental innovations, the author advocates enactment of a supplementary ‘petty’ patent system.

Keywords: Section 3(d), generics, ever-greening, patent eligibility, POSITA, patent busting, pharmaceutical companies, policy levers

 

Journal of Intellectual Property Rights

Vol 14, September 2009, pp 397-404

 

 

Trademark Licensing & Franchising: Trends in Transfer of Rights

Vernika Tomar

Chamber No. 206, New Lawyers' Chambers, Bhagwandass Road, New Delhi 110 001

Received 20 April 2009, revised 13 August 2009

A revolution has ushered in the field of trademarks with the change in the treatment to licensing under the new Trademarks Act, 1999. The replacement of the old Trademarks Act 1958, which referred only to permitted use and registered user’ with the new Act has enlarged the scope of the term permitted use. The effect, which has sought to be achieved with this change is, that now trademarks could be licensed to third parties without the need to register the licensee as the registered user. The requirement that a license be recorded with a Government Agency, i.e. the Trademark Office has been done away with and the failure to registration does not render a license invalid. Over the past fifty years, the law governing trademark licensing has changed drastically in response to the pressures of new commercial methods of distributing goods and services. With the gradual change in approach towards licensing, it slowly began to be accepted and now is in fact encouraged as a commercial phenomenon in the law. One cannot deny that licensing in trademarks has become a regular commercial practice. But at the same time the law has provided for fulfillment of certain conditions, viz. quality control or connection in course of trade, which need to be complied with as the trademark holder decides to enter into a license arrangement. And it is suggested that a trademark owner should avoid an exclusive license because it may be read as an assignment. Also, even though the system of keeping records of registered users of the trademark is no more prevalent, registration continues to carry additional advantages for a trademark owner under the current scheme of the Act also. Section 53 of the Indian Trademark Act, 1999 creates an incentive for registration by depriving the unregistered licensees of the right created by virtue of Section 52.

Keywords: Trademark licensing, trademark franchising, competition law, source theory, source indication, quality control

 

Journal of Intellectutal Property Rights

Vol 14, September 2009, pp 405-422

 

The TRIPS Article 23 Extension Stalemate Continues: A Way-Ahead for the Developing Countries

Rajnish Kumar Rai

Computer Center, Near Police Bhawan, Sector 18, Gandhinagar, Gujarat 382 009

Received 20 January 2009, revised 23 July 2009

The GI-extension debate has brought conspicuous public attention on the unusual characteristic of the TRIPS Agreement. Unlike other classes of intellectual property, the TRIPS Agreement provides a pecking order in the levels of protection for a single definition of subject matter. While most of the Members admit that the pecking order in the levels of protection has neither logical nor legal basis, they continue to vehemently defend their positions on GI-extension. Though the debate over extension of Article 23 started out largely as a North-North issue, the current debate is an interesting amalgamation of North-North conflict and North-South split. This paper examines the provisions of TRIPS Agreement regarding GIs and utilizes the submissions made to the TRIPS Councils to critically analyse the issue of Article 23 extension in the background of North-South face-off. This article also evaluates the possibility of higher protection in addressing distinctive circumstances confronted by the developing countries. This paper concludes that in view of the diverging interests among Members, the current TRIPS Agreement provisions regarding protection of GIs should be maintained as the minimum standard to achieve an acceptable agreement, and the question of GI-extension should be decided after examining the issue on two counts - the allowances that would required to be conceded elsewhere in exchange for agreement on GI-extension, and the liabilities linked with protecting GIs of other Members.

Keywords: GI, TRIPS Agreement, free riding, GI-extension

 

Journal of Intellectual Property Rights

Vol 14, September 2009, pp 423-431

 

Patent Specification: Engineering the Technical Output of Novel Invention

Anjana Baruah

Intellectual Property Management Division, CSIR H Q, 14 Satsang Vihar Marg,

New Delhi 110 067

Received 29 May 2009, revised 11 August 2009

The contents of a patent specification, also called as ‘the disclosure’, are the ‘written description’ of an invention. The layout of specification varies from place to place, however the essence of contents of specification is same throughout the world, because disclosure of specification is the basis to establish novelty and non obviousness of an invention which is essential to get grant of a patent. Moreover if any dispute arises, the Court of Law would settle the case based on contents of specification. Section 10 of Indian Patents (Amendment) Act, 2005 defines contents of specification; although it is not an exhaustive guideline to patent applicants, it gives an outline as to the layout of specification to express the technical output of invention into written description. Patent specification is equivalent to a scientific research article as both are written descriptions of inventions except the fact that patent specification is a techno legal document and the description of specification should establish novelty and non-obviousness of an invention. Therefore, as compared to scientific research article, description of patent specification is more comprehensive and requires some more elements to disclose invention. With the advent of Internet, granted patent specifications are available at free databases or websites of some Patent Offices. Patent statute and patent documents which are available on Internet provide vital guideline to transform novel invention into technical contents of patent specification. This article describes the statutes and the practice that may be regarded as guidelines to disclose an invention in a patent specification.

Keywords: Contents of specification, patent statute, written description, complete specification, disclosure, prior art search, statement of invention

 

Journal of Intellectual Property Rights

Vol 14, September 2009, pp 432-436

 

 

Impact of Patents on Indian Pharma Industry’s Growth and Competency: A Viewpoint of Pharmaceutical Companies in India

Manthan D Janodia, J Venkata Rao, Sureshwar Pandey, D Sreedhar, Virendra S Ligade

and N Udupa

Manipal College of Pharmaceutical Sciences, Manipal University, Manipal 576 104

Received 8 April 2009, revised 11 August 2009

Instruments of intellectual property rights (IPR) are considered to achieve economic, social and technological advancement for a country in all aspects. Of all the instruments of IPR, patent is the most contentious issue which is deliberated in several international fora. Patents are mostly debated for their role in pharmaceutical field. India signed General Agreement on Tariffs and Trade (GATT) in 1994 agreeing to implement the IPR in all fields of technology, including product patent, with effect from 1 January 1995. Taking into account India’s status as a developing country, India was granted a transition period of ten years from 1995 to 2005 to switch over from process patent to product patent. With this shift, it was imperative for Indian pharmaceutical companies to embrace product patents. This study was undertaken with the objective of identifying the situation in India after product patent regime was implemented. The role of Indian pharmaceutical companies in the era of product patent is crucial. The authors attempted to identify how Indian pharmaceutical companies view product patent regime, hindering the growth of industry or providing impetus to R&D, in this study. The measures taken by these companies to survive and grow in product patent regime have also been analysed.

Keywords: Pharmaceutical industry, TRIPS, product patent, R&D, IPR department

 

Journal of Intellectual Property Rights

Vol 14, September 2009, pp 437-445

 

 

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 17 August 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, copyright law and patent law are covered.

Keywords: Patents, ad interim injunction, pre grant opposition, public interest, copyright

 

*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, September 2009, pp 446-447

 

 

TRIPS, WTO and IPR – DOHA Round & Public Health

M D Nair

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

Received 12 August 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, copyright law and patent law are covered.