IP in Namma Chennai

Chennai, the Detroit of India, is home to production and R&D facilities of major automobile companies such as Hyundai, Ford, BMW, Renault, Nissan, TVS, as well as premier educational/research institutions such as Indian Institute of Technology, Anna University etc. There is no dearth of innovation.

Chennai is also home to the Intellectual Property Appellate Board (IPAB), the highest appellate authority in India to hear appeals arising out of the decisions of the Indian IP Office. The ecosystem for IP development and protection has grown rapidly in Chennai as compared to other cities.

Yellow Box analyses and compiles interesting facts and statistics on how Chennai is fast growing as the Intellectual Capital for protection and enforcement of IPR in India:

IPO Chennai
  1. The Intellectual Property Office (IPO) in Chennai caters to the jurisdictions of the four Southern states of Tamil Nadu, Karnataka, Andhra Pradesh and Kerala, in addition to the Union Territories of Puducherry and Lakshadweep.
  2. Chennai is home to the Intellectual Property Appellate Board (IPAB), the highest appellate authority in India to hear appeals arising out of the decisions of the Indian Patent Office.
  3. The Geographical Indications (GI) Registry is situated at the IPO in Chennai. This is the sole and exclusive centre for registration of GI's in India.
  4. Chennai tops the nation in number of patent application filings with 30-35% of the annual filings happening from the Chennai Patent Office (Source: Press release by Mr. Chaitanya Prasad, Controller General of Patents, Designs and Trade Marks).
  5. Madras High Court accounts for dealing with second highest number of IP cases in India annually, after the Delhi High Court.
  6. IPAB
    1. The Intellectual Property Appellate Board (IPAB), the highest appellate authority in India to hear appeals arising out of the decisions of the Indian Patent Office, is headquartered in Chennai.
    2. The IPAB, which is currently headed by a retired Madras High Court Judge Hon'ble Justice K. N. Basha, has "Balancing IP Protection" as its motto. In line with this motto, the IPAB has played a proactive role in shaping the IP protection and enforcement environment of the country (especially in the area of pharmaceutical patents) with well-reasoned landmark judgments.
    3. Rejection of evergreening of pharmaceutical patents: Novartis's patent application for Gleevec involved a crystalline form of a known substance. The Controller rejected the patent application on the grounds of lack of novelty and obviousness. However, the IPAB modified the decision of the Controller to state that the invention satisfied the tests of novelty and inventive step, but it failed to satisfy Section 3(d) of the Patents Act, which states that a new form of a known substance cannot be patented unless there is an enhancement of the known efficacy of the substance.
    4. GSK's patent for Tykerb was also rejected along above similar lines.
    5. Upholding the order of the Controller in issuing the first compulsory license: The Controller issued a compulsory license to Natco for the manufacture of Nexavar. The Controller had interpreted "working" under Section 84 to mean "manufactured in India to a reasonable extent." However, the IPAB clearly stated that the word "worked" must be interpreted on a "case-by-case" basis. It also went onto state that "the patentee must show why it could not be locally manufactured; a mere statement to that effect is not sufficient there must be evidence". In the current case, it was found that Bayer had not worked the invention on a commercial scale, even if "import alone would satisfy the working condition". The license reduced the cost of the drug by 97%.
    6. Mandatory compliance with Section 8 of the Patents Act: Section 8 of the Patents Act requires an applicant to disclose information about filing and prosecution of applications "in respect of the same or substantially the same information" and also to keep the Controller updated regarding the status of such applications. In Fresenius Kabi Oncology Limited v. Glaxo Group Limited and the Controller of Patents, the IPAB noted that "For good reasons, Section 8 is there in the Act." The patentee cannot tell the examiners "Compliance is very difficult and in case, there is the Super Kamadhenu, the internet, which will give you what you want."
    7. In Tata Chemicals v. Hindustan Unilever, the IPAB interpreted Section 8 to also cover prosecution before international non-governmental organizations set up under international treaties, such as ISA (International Search Authority) and IPEA (International Preliminary Examining Authority).
    8. Rejecting patentability of business methods patents in India: In Yahoo v. Rediff, the IPAB noted section 3(k) of the Patents Act specifically excludes business methods patents with clear statutory language. This is in contrast to foreign jurisdictions. The Board further noted that "Claims are at times not drafted directly as business methods, but with hitherto available technical features such as the internet, networks, satellites, telecommunications etc. If in substance, the claims relate to business methods, even with the help of technology, they are not considered to be patentable." The IPAB relied on this judgment in also rejecting the patentability of inventions comprising mathematical methods under Section 3(k).
    9. The IPAB has constantly pressed for standardization of procedures at the Patent Office and has not hesitated to come out against procedural irregularities. For example, in a ruling passed in Jan 2014 against an order issued by the Assistant Controller of Patents at the Chennai Patent Office, the IPAB directed the Patent Office to re-consider the application on the grounds that the claims put forward by the applicant were not properly considered. The IPAB further went onto describe the order issued by the Asst. Controller as "cryptic" and "non-speaking".
  7. Madras High Court
  8. Madras High Court
    1. Madras High Court accounts for dealing with second highest number of IP cases in India annually, after the Delhi High Court.
    2. Madras High Court is one of the three chartered high courts in India and has played a complementary role to the IPAB in balancing the "right to IP protection" and the "right to life" of every Indian citizen, as laid down in Article 21 of the Indian Constitution. The Madras High has delivered several landmark judgments covering different types of IPR.
    3. Upholding the constitutional validity of Section 3(d): Novartis had filed a suit challenging the validity of Section 3(d), as it violated Article 14 of the Indian Constitution, as well as India's obligations under TRIPS. The Madras High Court ruled that the section was fully TRIPS compliant. In its ruling, the Court noted that Section 3(d) provides for "easy access for Indian citizens to life saving drugs".
    4. Allowing one month's extension for National Phase Entry in Nokia Corporation v. Deputy Controller of Patents and Designs: Under the Indian Patents Act, an applicant has to file a National Phase application within 31 months from the priority date. However, the Madras High Court ruled that, if the applicant can satisfy the Controller that there was reasonable cause for delay, then a National Phase application, along with a petition under Rule 138 can be filed in India within 32 months from priority date.
    5. Declaring puffing (superlative claims made about a product) as illegal: The Court granted an injunction to Colgate against Anchor for disparagement (Anchor had advertised its toothpaste as being the first and only toothpaste to offer all-round protection). The Court further stated that puffing amounted to an unfair trade practice and allowing puffing would amount to "de-recognizing the rights of consumers guarenteed under the Consumer Protection Act, 1986".
    6. Recognizing the quasi property rights of an organizer in providing real-time score updates (sports): The Court ruled against the right of telecom service providers in providing score updates via SMS stating that "it amounts to interference with the normal operation of the organizer's business". The Court noted such actions were done with the intention of "endeavoring to reap where the defendants have not sown." A similar ruling was later issued by the Delhi High Court in favor of Star India Private Limited.
    7. Ruling against "safe-harbor" for internet service providers in copyright infringement cases: The Court noted that, if the "safe-harbor" provisions of the IT Act, 2001 were extended to copyright infringement cases, then it would defeat the purpose of Section 81 which states that "nothing contained in this act shall restrict any person from exercising any right conferred under the Copyright Act, 1957 or the Patents Act, 1970".

    “There’s so much more to India than Delhi & Mumbai. Looking at Delhi & Mumbai is like saying all US is Washington & New York, and completely ignoring cities like Chicago, Atlanta & Dallas” quotes Dr. Vinod Surana, (Partner & CEO of Surana & Surana) in the story published by AsiaIP, and Chennai by far has become one of the hottest destinations for companies to create, nurture, protect & enforce their IP rights.