Case updates

  • Bombay High Court Dismisses Bayer’s Appeal; Upholds IPAB’s Compulsory Licensing Order

      The compulsory license issued on Bayer’s cancer drug Nexavar by Controller General of Patents, which was subsequently upheld by the Intellectual Property Appellate Board (IPAB), has also been upheld by the Bombay High Court. In its order, Court noted that Bayer’s argument that Natco did not make an effort to obtain a voluntary license on reasonable terms and conditions (Section 84(6) (iv)) did not hold good as the counsel for Bayer gave “No” as the answer when asked whether Bayer had considered granting of voluntary license to Natco after receipt of Natco’s initial letter seeking voluntary license. In considering whether the reasonable requirements of the public had been satisfied, the Court took into account the affidavit from Dr. Manish Garg (Country Medical Director, Bayer). In his affidavit, Dr. Garg had stated that approximately 8,800 patients would have required the drug in India in 2011. As opposed to this, Bayer had supplied the drug to only 200 patients. Thus, it was clearly established that the reasonable requirements had not been satisfied. The Court further noted that “In respect of medicines the adequate extent test has to be 100% i.e. to the fullest extent. Medicine has to be made available to every patient and this cannot be deprived/ sacrificed at the altar of rights of patent holder. Undisputedly the requirements of all the patients are not being met by the patented drug”. To the question of whether infringers’ products need to be taken into account to determine whether demand had been satisfied or not, the Court observed that Bayer’s reliance upon the decision of the High Court of Justice Chancery Division dated 7 November 1910 in which the Court held that the “quantity of patented goods supplied by the infringers could be considered while deciding an application for revocation of the patent on the ground that patented article is mainly manufactured outside of U.K” was not relevant to this case as Bayer had sued the infringers in the current case (unlike the cited case). As a result, there was no certainty of the infringers supplying the product at a consistent rate. Finally, in deciding whether the drug was available at a reasonably affordable price, the Court rejected Bayer’s arguments that the Controller/IPAB ought to have first determined what price is “reasonably affordable”, taking into account R&D expenses incurred and stated that “Reasonably affordable price is determined purely on the basis on the evidence and not on the basis of investigation”. Since Bayer chose not to place audited accounts and quantum of “orphan drug” reimbursement received from the US Government, there was no way the authorities could have arrived at a mathematical figure for reasonably affordable price.

  • Review Petition of Millennium Pharma Dismissed

      A petition filed by US-based Millennium Pharma, which sought a review by the Intellectual Property Appellate Board (IPAB) of its earlier order against the company’s patent application for its cancer drug Velcade (bortezomib), has been dismissed by the IPAB. In its order, the IPAB noted that a review petition can only be filed to correct striking errors and cannot be used as an “appeal in disguise”. The IPAB further noted that there was no error in its previous order that needed review. The patent application, which was filed by Millennium Pharma on September 27, 2006, was rejected by the Delhi Patent Office based on a pre-grant opposition filed by Natco Pharma, vide order dated July 24, 2009. After a long delay, an appeal was filed by the applicant on March 26, 2010, along with a petition for condoning the delay. The IPAB however was not satisfied with the explanation given for the delay and thus dismissed the appeal. In its order, the IPAB made it clear that “it is not really length of the delay which matters, but whether the explanation is satisfactory.” To the applicant’s argument that orders passed under Section 25(1) (pre-grant opposition) became appealable only after the decision of the Delhi High Court in UCB Farchim SA v. Cipla Ltd & Others, the IPAB observed that “the appeal should have been filed at least within two weeks from the date of judgement of the Delhi High Court”.

  • Trademark Trial and Appeal Board Cancels ‘Redskins’ Trademark

      The United States Trademark Trial and Appeal Board dealt a major blow to the football team Washington Redskins by cancelling six of its registered federal trademarks because the trademarks were “disparaging to native Americans” at their respective times of registration. While the ruling does not require the team to change its name, it makes it almost impossible to prevent others from using the name on T-shirts, sweat shirts and other forms of merchandize. This could have serious financial implications not only for the Washington Redskins, but for the National Football League as a whole, given that all teams except the Dallas Cowboys share the total revenue generated from sales of their licensed merchandize. The Washington Redskins contributes $145 million of the $9 billion generated annually from such sales. According to Mark Conrad, associate professor of law and ethics at Fordham University, “the cost of rebranding the franchise could be millions”. The team plans to appeal against the decision.

  • US Supreme Rules Clarifies on Patentability of Software and Business Methods

      The US Supreme Court has ruled against Alice Corp. in the company’s legal battle with CLS Bank. The case, which was followed keenly by the likes of Google, Microsoft and other technology companies, revolved around Alice Corp.’s patent for a “computer-implemented method of lowering risk in foreign currency trades, essentially making sure that someone won’t default after half the trade is completed”. Though the concept was well-known in the art, Alice claimed to have implemented it for the first time on a computer. In its ruling, the Court stated that software “requiring a generic computer to perform generic functions” is not patentable. The Court further went onto note that Alice’s patent was nothing more than “electronic recordkeeping -- one of the most basic functions of a computer". Thus, for software to be patentable, the claimed invention must tangibly improve the operation of a computer or provide an advancement of the art in which it is applied to.

  • American Broadcasting Companies Emerge Victorious in Fight against Aereo

      The United States Supreme Court has ruled that Aereo, a start-up company that threatened to potentially revolutionize television broadcasting by allowing subscribers to view (without the need for a traditional antenna) or record (without the need for a traditional digital video recorder) live television programs using internet-enabled devices, has infringed the copyright of television broadcasting companies by capturing their signals and not paying them licensing fees. The question at hand was whether Aereo’s service fell under the category of “public performance” and thus under the scope of the United States Copyright Act, 1976. In its oral arguments, Aereo contended that each subscriber is assigned a separate mini-TV antenna from among the thousands of such antennas present in its large “antenna arrays”, thus ensuring that no two subscribers are watching “the same copy of a program”. The company further argued that it was just the supplier of equipment that provided consumers “a high-tech way to watch programs they were already entitled to watch over the air free of charge”. In its brief submitted to the Court, the company cited the “Betamax” case (Sony Corp. of America v. Universal City Studios) 12 times. The judgment in the Betamax case created a “legal safe haven” for home video recording devices. The Court, however, had a different interpretation and viewed the company as more than just an equipment provider. The Court further noted that the fact that Aereo “transmits via personal copies of programs” does not make a difference.

  • Apple can Trade Mark Store Layout, Rules EU

      Apple has won the case with the European Court of Justice (ECJ) for trade marking the layout of its stores. Apple secured a similar ruling in the US in 2010 when it sought registration for a 3D trade mark consisting of a representation of its flagship stores for ‘retail store services’. In 2013, the extension of US registration to German territory was refused. Apple appealed against the decision to ECJ. ECJ reversed the decision of the German Patent and Trade Mark Office, and said that the layout of Apple Stores fulfilled the criteria for a trademark. It constituted a sign that can be represented in a graphical format and distinguishes the goods/services of one company from another. The Court concluded that the representation of the layout of a retail store may be registered as a trade mark. The ruling in favour of Apple would prevent other retail outlets from duplicating Apple’s layout.

  • Consider Sherlock Holmes in The Public Domain

      Sir Arthur Conan Doyle’s Estate asked the US Seventh Circuit Court to issue a stay on the ruling by the District Court of Illinois which determined that Sherlock Holmes was in public domain. A stay would have effectively blocked the publication of the book by Leslie Klinger. However, the CC ruled that Sherlock Holmes (along with 46 stories and four novels he’s appeared in) is in public domain, thus reaffirming the expiration of the copyright once owned by the estate of Scottish writer Arthur Conan Doyle. When Klinger was working on a sequel, “In the Company of Sherlock Holmes”, he was threatened by Doyle’s estate for paying licensing fee. However in response Klinger sued Doyle’s Estate and said that he was only using the works which were in public domain and wasn’t infringing on the 10 Holmes stories that remained under 95-year copyright protection. While rejecting the appeal filed by Doyle’s estate, the CC stated that the concern of Doyle’s estate were not in the specific alterations in the depiction but that the work was being published without payment of licensing fee to the estate.

  • News Updates

  • Amul Emerges Victorious at the World Dairy Innovation Awards

      The winners of the World Dairy Innovation Awards were announced at the 8th World Dairy Congress conducted in Istanbul, Turkey on June 17. Amul, India’s largest food product marketing organization overcame stiff competition and emerged as the winner in the “Marketing” category for its “Eat Milk with Every Meal” Campaign. The campaign started by Amul in July 2013 in both print and digital formats showcased the goodness of milk and milk products. Humor was an integral part of the campaign, with various ads portraying a tennis player with no partner winning a doubles match, a man lifting his car to change its tyre and a professional who hasn’t availed a sick leave in five years. Additionally, Amul was also a finalist in the “Brand Extension” category for its Amul Kool PET bottle.

  • Measures to Promote Innovation in Union Budget 2014-15

      The Union Budget 2014-15 was presented by the Indian Finance Minister Mr. Arun Jaitley on July 8, 2014. Several key policy measures were announced to promote innovation, including a Rs. 10,000 crore incubation fund to address the venture capital needs of MSME (micro, small and medium enterprises) and start-up companies, a “Technology Centre Network” and a nationwide “Incubation and Accelerator Programme” to promote innovation and entrepreneurship, establishment of a “National Centre for Himalayan Studies” to increase the capacity in the nation for Himalayan Studies, establishment of world class biotech clusters in Bengaluru and Faridabad (along the lines of those present in Boston, San Francisco, Cambridge and Heidelberg) and establishment of agri-biotech clusters in Pune and Kolkata. Further, five new Indian Institutes of Technology (the country’s premier teaching and research institute) have been proposed in Jammu & Kashmir, Chattisgarh, Goa, Andhra Pradesh and Kerala, thus taking the total tally to 21. The pre-budget Economic Survey acknowledged that India’s innovation capacity is less than that several of its BRICS counterparts, namely Brazil, China and South Africa.

  • Indian Origin Scientist Awarded World Food Prize

      Sanjaya Rajaram, an Indian origin scientist based in Mexico was awarded the 2014 World Food Prize for developing nearly 500 varieties of “disease-resistant wheat adaptable to many climates and difficult growing conditions”. The varieties developed by Rajaram, who was mentored by none other than Norman Borlaug (the mastermind behind the Green Revolution and the founder of the World Food Prize), have been subsequently cultivated in 51 countries in six continents. In a befitting tribute to Rajaram, Kenneth Quinn, President of the World Food Prize Foundation stated that Rajaram’s “breakthrough breeding technologies have had a far-reaching and significant impact in providing more food around the globe and alleviating world hunger”. Rajaram believes that the future challenge lies in developing plant varieties resistant to climate change, including drought and salt water. He plans to donate part of the $2, 50,000 to poverty alleviation initiatives in India and use the rest for plant breeding research work.

  • Websites Banned from Streaming FIFA World Cup

      The Delhi High Court, acting on a petition filed by Multi Screen Media (MSM, formerly Sony Entertainment Television India Pvt. Ltd.) restrained over 400 websites from live streaming of the FIFA World Cup. MSM contended that these overseas-based “rogue” websites were infringing its online rights. Additionally, Court also ordered the Department of Telecommunications and the Department of Information Technology to direct Internet Service Providers across the nation to block all websites that violated the rights of MSM. MSM was the official broadcaster of the tournament in the Indian subcontinent and telecasted the tournament on six of its channels, in addition to live mobile and internet streaming through its “Liv Sports” mobile application and “Liv Sports” website respectively.

  • Tesla Donates Electric Car Technology Patents

      In a startling and revolutionary move, automobile giant Tesla Motors has donated all its patents on electric car technology to the public, thus allowing anyone to make and use their proprietary technologies without having to pay royalty. Elon Musk, the CEO of Tesla Motors stated that he expects the entire world to benefit from a “common, rapidly-evolving technology platform”. Musk further stated that the current patent system hinders innovation, rather than fostering it and that patents “entrench the positions of giant corporations and enrich those in the legal profession, rather than the actual inventors”. Nissan and BMW have already expressed their interest on collaborating with Tesla, especially on Tesla’s “Supercharger” method for recharging batteries in a quick manner. Tesla’s move seems to have been appreciated by the market, with the company’s shares skyrocketing to an all-time high.

  • Cisco Investments Launches ‘India Innovation’ Theme

      IT giant Cisco’s venture capital arm, Cisco Investments has announced the launch of an ‘India Innovation’ theme with the allocation of $40 million to drive product and technology innovation in the nation by funding early-stage companies. Particularly, the company has expressed interest in investing in companies focused on “cost-optimized designs, industry-vertical solutions and application of cloud”. Mumbai-based Covacsis, a “real-time plant analytics framework” provider founded in 2009 by two IIT, Bombay graduates is reported to be the first company funded under this theme. In a press release, Dinesh Malkani, President of Sales, Cisco India and SAARC, stated that the Indian technology market has tremendous innovation potential and that the objective of this investment is to help translate that potential into the market so as to benefit the society both within India and abroad.

  • European Patent Organization (EPO) Signs Agreement with Tunisia

      On July 3, 2014, the EPO and Tunisia signed an agreement that would enable patentees of European origin to validate their patents in Tunisia, though Tunisia is not a member of the EPO. The agreement was signed by Benoît Battistelli (President of the EPO) and Kamel Ben Naceur (Tunisian Minister for Industry, Energy and Mines), both of whom stated that they expect the agreement to boost innovation and foreign investment in Tunisia. The agreement is part of ongoing negotiations between the EU and Tunisia for a comprehensive free-trade agreement. The EPO has earlier collaborated with the National Standardization and Industrial Property Institute in Tunisia (INNORPI) in the areas of patent document publication and training of examiners in performing patentability searches and drafting written opinions on patentability. The agreement has to be ratified by both countries before it can come into force.