Journal of Intellectual Property Rights


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                NUMBER 3

                 MAY 2006

CODEN: JIPRFG 11(2) 171-238 (2006)


               ISSN: 0971-5544








Business Method Patents: The Road Ahead


            Abhimanyu Ghosh



The Melton Mowbray Pork Pie Case: Lessons for India?


            Latha R Nair



Protection of Intellectual Property in the Form of Trade Secrets


            Abhik Guha Roy



Piracy of Trade Dress and the Law of Passing off: National and International Perspective


            Shantanu Sahay



Some Reflections on Patent Search: A Case Study of Medicinal Plants of India


            S K Soam and H B Rashmi



Literature Review






· Ownership matters: Intellectual property, privatization and innovation · Intellectual property and the nature of science · Reality and virtual reality · Firm size and the use of IPR · Intellectual property developments in biochip nanotechnology






· The software patent debate · Comparing firms’ triadic patent applications across countries
· Patent pools and diagnostic testing · Study of landscape of global leather patents and analysis of technology linkages to trade · Considerations, challenges and methodologies for implementing best practices in patent office · Patenting nanotechnology · Patentability of Internet games · The evolution and impact of genome patents and patent applications
· Patents at the core: the Biotech business · Considerations on the standard MTA under the FAO Treaty · Patent protection and FDI · Corporate patents



Copyright and Trademark



· Contribution and collaboration in joint authorship · Art and copyright · What copyright teaches patent law about fair use · Copyright in cyberspace · Analysis of UK’s implementation of the anti-circumvention provisions of the EU copyright directive · The new law of third party liability for copyright infringement under US law · Digital transformation of copyright laws and the misty Indian perspective · Music for nothing · Parallel imports and the lot of a starving artist · Whither copyright? Transformative use, free speech, and an intermediate liability proposal · Dilution of authorship in scientific papers, and the need for the academy to obey copyright law · A human rights perspective on the database debate
· Digital rights management in the 21st century · Legal pitfalls in taking or using photographs of copyright material, trademarks and people · Elements for legislation in user countries to meet the fair and equitable benefit-sharing commitment · Plagiarism in cyberspace · Can copyright lend its Cinderella magic to Chinese folklore? · The global distribution of trademarks · Standing at the crossroads of trademark law · Branding: From a commercial perspective · Trade secret protection · Basmati rice: Geographical indication or mis-indication · Ending the Circuit Split over use of a competing mark in adverting



IPR News



IPR News—General



· India & USA cooperate to promote IPRs awareness · China seen as fifth biggest drugs market by 2010



Patent News



· Improved technology searches online · Vitamin B patent fight goes to high court · India, China could be big players in patent game · More patent armour for pharma · Indian Inc gets high on patents · ‘Sequential’ opposition delaying drug patents · TiVo receives $74M in patent lawsuit · Software firm files patent suit vs Google · UK Patent Office launches new mediation service



Copyright and Trademark News



· New Zealand company goes for copyright on 'manuka' · Warner Brothers charges Bajaj with copyright violation · WIPO to revise trademark law treaty · WIPO launches online service for renewal of international trademarks · EU OKs simplifying food trademark rules
· Goa Government to apply for GI for ‘fenni’



Key Patents



·’s tax figuration system · Tunable optical filter and package patented
· Mussels strengthen fight against malaria · Cargo sensor patented · Waste management system patented · Patent for archiving and streaming videoconferences



Book Review



Intellectual Property Protection and Sustainable Development


            Cullet Philippe



Author Index



Ghosh Abhimanyu 175

 Nair Latha R 185

 Rashmi H B 207

Roy Abhik Guha    192

Sahay Shantanu 201

Soam S K    207

Keyword Index


Business method patents                                       175

Digital rights management                                      222

EC Regulation 2081/92                                          185

Generic term                                                           185

Genome patents                                                     217

Geographical indication                                          224

Geographical indications                                        185

Inevitable disclosure doctrine                                 192

Intellectual property                                       192,214

IPR                                                                         207

Medicinal plants                                                    207

Melton Mowbray                                                  185

Nanotechnology                                                     216

Passing off                                                              201

Patent pools                                                           215

Patent search                                                          207

Software                                                                 175

Software patent                                                      215

State Street case                                                     175

Trade dress                                                             201

Trade secret                                                            192

Trademarks                                                            201

Traditional knowledge                                            185

TRIPS Agreement                                                  185

Unfair competition                                                   20


Journal of Intellectual Property Rights

Vol 11, May 2006, pp 175-184


Business Method Patents: The Road Ahead

Abhimanyu Ghosh

Received 30 December 2005, revised 3 April 2006

Business method patents (BMPs) are patents granted for particular business models, that are unique to a particular organization. United States Patent and Trademark Office (USPTO) have been granting patents for ‘business methods’ from the early 1990s. From then onwards, there have been a large number of BMPs, which have been consistently awarded in the US. However, there exists a huge debate whether this kind of patent should be granted or not – whether business models at all constitute patentable matter. In this paper, the author discusses evolution of BMPs, and argues that in spite of the criticisms, this form of patents is necessary, particularly, considering the current hi-technology scenario. The paper discusses BMPs not only from the US standpoint, but also the position taken by other countries and the repercussions of having a liberal attitude of US while granting patents to business methods, especially e-commerce transactions, which are usually mere replications of popular methods used in brick-and-mortar businesses.

Keywords: Business method patents, software, State Street case

Journal of Intellectual Property Rights

Vol 11, May 2006, pp 185-191


The Melton Mowbray Pork Pie Case: Lessons for India?

Latha R Nair

Received 10 March 2006

The recent decision of the High Court of UK in the Melton Mowbray case raises relevant issues regarding protection of geographical indications for a developing country like India, which has an abundance of products that could be registered as geographical indications. However, before one embarks to register these names, it is relevant to examine whether these products still qualify as geographical indications or have become generic terms by disuse and lack of protection. Also, there are certain prerequisites to be met before registering a geographical indication such as putting in place systems for quality control and arriving at a consensus among the producers to follow uniform methods of production so that the consumer gets end products of consistent quality. Absent such exercise, not only bona fide users of generic names are displaced but also consumers are deceived into buying products that do not really possess any unique characteristics. This article, besides analysing the Melton Mowbray case, examines the concept of protection of geographical indications and the lessons India may learn from the decision.

Keywords: Melton Mowbray, geographical indications, EC Regulation 2081/92, TRIPS Agreement, generic term, traditional knowledge

Journal of Intellectual Property Rights

Vol 11, May 2006, pp 192-200


Protection of Intellectual Property in the Form of Trade Secrets

Abhik Guha Roy

Received 29 November 2005, revised 29 March 2006

The onset of globalization has lead to a surge in intellectual activity and thereby initiated a need for better methods on intellectual property (IP) protection. One of the forms of IP that will soon overpower other recognized forms of IP protection is ‘trade secrets’. The greatest advantage of this form of IP is that the protection provided is perpetual, thus gone are the days of limited monopoly. This new wave of protection is based on an element of trust of confidants who would maintain secrecy. But this system comes to a standstill when there is a breach of trust or confidence by confidants entrusted with such secrets or in case of companies when trusted employees are no longer in the service of the organization owning the trade secrets. This paper looks at the possible remedies that a trade secret owner who is also the employer, can get on such breach of trust or confidence. After identifying the models used by courts of developed countries, the author attempts to formulate a possible model that can be followed by Indian courts in counteracting this legal hurdle.

Keywords: Trade secret, intellectual property, inevitable disclosure doctrine


Journal of Intellectual Property Rights

Vol 11, May 2006, pp 201-206

Piracy of Trade Dress and the Law of Passing off: National
and International Perspective

Shantanu Sahay

Received 14 December 2005, revised 14 March 2006

This paper deals with the meaning and connotation of trade dress and growing dimensions with respect to the scope of its definition which has expanded to include hotel design, virtual trade dress, etc. The possible mechanisms to deal with trade dress infringement and protection with respect to passing off are also discussed. The scope of trade dress infringement with respect to passing off has been highlighted by various courts in the US and in a particular case, the US Supreme Court brought passing off protection within the scope of the statute itself. These relevant instances within the US and English laws with respect to passing off cases are examined. Finally, the Indian context, which is largely based upon the UK laws, is reviewed with reference to a recent case law in this regard.

Keywords: Passing off, trade dress, trademarks, unfair competition


Journal of Intellectual Property Rights

Vol 11, May 2006, pp 207-213

Some Reflections on Patent Search: A Case Study of Medicinal Plants of India

S K Soam and H B Rashmi

Received 17 February 2006, revised 15 April 2006

The current changes in legal and administrative framework of patents and other forms of intellectual property at global and national level have brought changes in organizational and individual attitude towards protection and continuous monitoring of IPRs generated by them. These changes also brought out economy and efficiency in generation of technology or intellectual worth. The latest probing technique such as patent searching has been demonstrated as one of the most effective ways to attain these objectives. This paper also describes constraints and opportunities in conducting patent search using free Internet websites EPO and USPTO with the illustrative analysis of medicinal plants of India.

Keywords: Patent search, IPR, medicinal plants