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New Delhi, April 26 (IANS) The Council of Scientific and Industrial Research (CSIR) was on Thursday awarded the National Intellectual Property (IP) Award 2018 in the category 'Top R&D Institution/Organisation for Patents and Commercialisation', an official statement said.

Union Commerce and Industry Minister Suresh Prabhu gave out the award to CSIR Director General Girish Sahni at a function organised by the Indian Intellectual Property Office and Confederation of Indian Chambers of Commerce (CII) here to celebrate the World IP Day.

CSIR Laboratories have been developing and providing technology focused at the unmet need and the cutting edge knowledge base and human resource on the other for socio-economic development in the country, it said.

"The CSIR S&T domains range from environment to health and drinking water, from food, housing, energy to specialty chemicals and petrochemicals, glass and ceramics to mining, metals and minerals, medicinal plants, leather to machinery, instrumentation and strategic sectors including aerospace.

"It is contributing for the Missions such as Swachh Bharat, Swasth Bharat, Samarth Bharat, Make in India, Innovate for India, Startup India and Skill India," said the statement

The CSIR has been ranked ninth in the world among the 1,207 government institutions, with an overall global ranking of 75 in the world, covering 5,250 institutions, as per the statement.

"Pioneer of India's intellectual property movement, CSIR today is strengthening its patent portfolio to carve out global niches in select technology domains," it said.

Among the other awardees were IAS officer couple Mayur Maheswari and Ritu Maheswari who were presented a special citation award for their patent invention to facilitate communication among various health stakeholders which they later assigned to the Union Health and Family Welfare Ministry for free utilization.

Ritu Maheswari is currently the District Magistrate of Ghaziabad and Vice Chairperson of Ghaziabad Development Authority while her husband is posted in Delhi.

The Indian Intellectual Property Office confers IP Award on outstanding innovators, organisations and companies in the fields of patents, designs, trademarks and geographical indications on the occasion of World IP Day every year.

Source: https://economictimes.indiatimes.com/news/science/csir-awarded-national-intellectual-property-award-2018/articleshow/63930916.cms

Another day, another multi-billion dollar judgment potentially hazardous to the software development community. In the latest round of the Oracle v Google dispute over the use of Java (Oracle) API’s in Android (Google), the Court of Appeals for the Federal Circuit of the United States (CAFC) overturned the lower court’s jury verdict that Google’s use of Java APIs was fair, and remanded the case back to trial (for the third time) on damages that Google would have to pay – potentially 9 Billion USD.

However, the judgement is goes far beyond monetary claims between these two tech giants – having deemed APIs to be copyrightable subject matter, it sets the standard to which the use of APIs will be held when determining whether its use is ‘fair use’ under US law, a body of law often referenced in India as well. This post will discuss the implications of the most recent finding of the CAFC.

Google v Oracle’s Never-Ending Trials

The dispute between Oracle and Google began several years ago and has been followed with some interest by lawyers and developers alike. A quick recap of the facts leading to the suit, which we have previously covered here

Oracle owns the Java programming language – a language built for interoperability and multifunctional use, with the motto ‘write once, run anywhere’. Google, in 2005, acquired Android, and began its development by utilizing Java APIs. Oracle sued Google over the use of its code.

The first trial rested on the question of whether APIs are copyrightable subject matter. This question is of immense consequence. APIs or Application Programming Interfaces, are the signposts which allow developers to make different programmes and software interoperable, without having to rewrite the entirety of the code themselves, in a new and original manner. If you decide to tweet this post using the link provided below (please do!), you will be utilizing Twitter’s API which has been embedded on this blog. APIs consist of declaring code – an expression that identifies the prewritten function and tells the computer to execute the implementing code – the specific instructions for how to carry out a program.

Oracle claimed copyright over the declaring code, verbatim copied by Google, as well as the ‘structure, sequence and organisation’ of implementing code being used by Google for the development of the Android software. This SSO standard is the standard used to determine whether software has been copied, under US Copyright Law, when it does not amount to literal copying. Google’s defence was that APIs are not copyrightable subject matter.

The debate on copyrightability rested essentially on the principle that the use of functional elements of a literal work should not amount to infringement of the work. The District Court found that Oracle APIs were not copyrightable, which finding was reversed by the Federal Court of Appeals, and remanded back to trial on whether Google actually infringed Oracle’s copyright, or whether the use of the APIs should be deemed fair use. The jury returned a verdict favourable to Google – declaring its use of APIs as fair, which has now been overturned once again by the Court of Appeals for the Federal Circuit.

The Court of Appeal Decision on Fair Use – Another Blow for Software Innovation

There are four, non-exclusive statutory factors generally considered by courts in the US when deciding on fair use in copyright – these factors have to be weighed against each other to arrive at the final conclusion regarding fair use. These were examined by the Court appeals in the following manner:

1. Purpose and character – The Court found that Google’s use of the Java APIs was commercial in nature (notwithstanding that the Android software was open source) because Google earned advertising revenue from data collected through Android. Secondly, the Court rejected Google’s contention that the use was ‘transformative’, a strong factor in favour of fair use. The Court held that Oracle had already licensed its APIs for use in software, and moreover, the purpose of the use was the same – the declaring code was verbatim copied for the same purposes for which the APIs had been made.

2. Nature of the work – On the second factor, the Court found in favour of Google, because it recognized that APIs were functional and their use was constrained by the necessity to create APIs in a particular manner to enable their functionality. However, the Court noted that this factor was not particularly significant in the overall consideration of factors.

3. Amount and substantiality of the copied portion used in relation to the the work as a whole – On this factor, the Court found that Google’s use of 11,500 lines of code was more than what was necessary for the purpose of writing in Java. Further, qualitatively, the copied lines of code were important to the Android system. Therefore, this factor too weighed against a finding of fair use.

4. The effect of the use on the potential market of or value of the copyrighted work – The Court found that Oracle’s own competing smartphone OS had suffered as a result of the popularity of the Android system and overturned the jury verdict on this principle, which had held in favour of Google.

On a consideration that three of the fair use standards clearly weighed against Google, the Court reversed the jury’s finding of fair use. While the Court noted in its conclusion that its finding in this case did not imply that the “fair use defense could never be sustained in an action involving the copying of computer code.”

Unfortunately, this conclusion does not offer too much comfort to the developer community operating under US law, where it remains unclear whether the development of programmes which incorporate APIs will make developers liable for infringement, and to what extent they can protect themselves from this charge while enabling the APIs necessary functions.

As one scholar notes, the real difficulty in this court was the initial finding of infringement of APIs, which blurs the right between the protection of creative and functional elements. As a matter of principle under many copyright jurisdictions, that portion of a work used incidentally to the expression of a particular idea, should not constitute infringement. In considering APIs, there are only specific means of writing a program which is ‘creative’ and does not copy the structure, sequence or originality of an existing API which enables a particular function.

Oracle’s win on infringement meant, effectively, that any API executing a particular function would be the property of the person who wrote that, effectively excluding the use of that function (say, connecting a WordPress blog to an Amazon cloud server). Moreover, the ruling has a cascading effect given that uses of APIs have been without licenses, upon which further systems have been built, which are now imperilled.

In terms of its latest ruling on fair use, the Court of Appeal has indicated that functionality does not play a particularly large role in fair use of software, a finding which is particularly important given the works in question – APIs which are essentially required methods for compatibility. Secondly, that ensuring interoperability and porting to different platforms may not be considered transformative enough for a favourable fair use verdict.

Ultimately, both the copyrightability and the fair use verdict jeopardize the developer community’s long-standing custom of permissionless use of APIs for ensuring compatibility between programs. Given that an open source customisation of APIs for use in smartphone was not found to be fair, it is likely that it will embolden developers to lay claim over specific APIs. There will, in turn, be a chilling effect in the use of APIs by developers, instead requiring them to rewrite their own specifications for these specific uses, and convince anyone working with them to use their APIs, instead of operating in a more free and interoperable universe.

There are jurisdictions where the issue has been treated differently. The CJEU has declined copyright protection for APIs, holding that extending protection to the functional elements of a program would amount to allowing ideas to be monopolized, and not merely specific expressions. India allows software to be copyrighted under the Copyright Act, and, while the use of APIs does not clearly fall into the exemptions under Section 52 of the Act, Courts in India have recognized that where an idea can only be expressed in a particular manner, such expression would not be entitled to copyright protection.

Source : https://spicyip.com/2018/04/oracle-v-google-us-court-of-appeals-rules-against-googles-fair-use-of-oracles-java-apis.html

BlackBerry may not be the leader in the global smartphone market anymore but the company does own a treasure trove of patents. As investors raise concerns about the growth rate at its core security-focused software business, the company is looking through its library of wireless and messaging patents to find more opportunities for licensing deals and even lawsuits. After filing a similar lawsuit against Facebook last month, BlackBerry has now sued Snapchat for patent infringement.

The 71-page complaint against Snapchat maker Snap alleges that the company has infringed on its messaging technology patents in the Snapchat app. The patents Snap is alleged to have infringed on include map improvements and UI for mobile devices as well as advertising methods. It also mentions that Snap Maps and the display count of unread messages are infringing activities as well.

Bloomberg mentions in its report that two of the six patents that BlackBerry has alleged Snap to have infringed on are also in the suit against Facebook that was filed on March 6th. Its suit against the social media giant alleged Facebook, WhatsApp, and Instagram of infringing on its messaging app patents.

The complaint also mentions that BlackBerry has tried to resolve this matter out of court by communicating with Snap for over a year but to no avail. It now seeks “redress for the harm” caused by Snap’s alleged patent infringement with this lawsuit.

Snap is yet to comment on the matter.

Source: http://www.ubergizmo.com/2018/04/blackberry-sues-snapchat-for-infringing-patents/

BlackBerry is gradually feeling out its new niche as a veritable patent troll. Following a complaint it filed against Facebook last month, the company has filed fresh litigation against Snap, creator of Snapchat, for allegedly infringing its messaging patents.

Bloomberg first reported the lawsuit on Tuesday. It claims that BlackBerry has been trying to resolve Snap’s alleged infringement of six of its patents for the last year. “Various letters, calls and an in-person meeting,” as the lawsuit puts it, have resulted in failure to find an acceptable resolution.

It should come as no surprise that the patents relate to BlackBerry’s BBM messaging service that was considered the crown jewels of the company in the days when it was known as “CrackBerry” due to its popularity. Among the features that BlackBerry claims Snap stole, it lists the display of timestamps in the messaging interface, and “mapping techniques to establish and maintain real-time activity location information.”

According to the complaint:

Defendant’s use of BlackBerry’s inventions and infringement of the Patents-in-Suit have succeeded in diverting consumers away from BlackBerry’s products and services and toward those of Defendant. This infringement has resulted in a substantial and undeserved windfall for Defendant as these users drive Defendant’s revenue. Defendant’s gain comes at BlackBerry’s expense, depriving BlackBerry of revenue to which it is entitled as a result of its inventions.

While Snap has experienced rapid growth over the last few years, it’s hard to call it a success story. For the last two months, its stock price has slipped further towards oblivion. It’s currently close to an all-time low after getting a huge bump in January. That’s resulted in two rounds of layoffs of more than 200 people.

BlackBerry, on the other hand, is on the rise despite being miles away from its mid-aughts peak. In 2008 it was selling at $144 per share; today it goes for about 10 bucks. But it gained around 50 percent in 2017 as it’s come to terms with its new business approach. TCL licensed the BlackBerry name in 2016 and has manufactured several new handsets. BlackBerry LTD pivoted to become a software company, but some analysts believe that it has much greater potential in profiting from litigation around its patent portfolio. IEEE ranked BlackBerry fourth in the category of internet and communication services for its annual patent power rankings in 2016. Google, Facebook, and Verizon were the only companies to rank higher.

In 2015, BlackBerry CEO John Chen claimed that the company holds “about 44,000 patents,” and monetization of those patents “is an important aspect of our turnaround.” Since then, it’s filed litigation against Facebook, Avaya, BLU, Nokia, Cisco, and most bizarrely, Ryan Seacrest for his Typo iPhone case that attempted to slap a BlackBerry-like keyboard on an iPhone.

Investors seem to like the strategy, and so far it’s resulted in numerous settlements. Whether BlackBerry’s various claims have merit will be up to the courts to decide, but the features it mentions in the suit certainly seem to fall into the category of “just the way things are now.” A patent for a timestamp on a message seems as obvious and frivolous as IBM’s claim on out-of-office email. But hey, I’m not a corporate patent attorney.

Source:  https://gizmodo.com/blackberry-goes-after-snapchat-in-saddest-patent-lawsui-1824343575

 American diesel engine maker Cummins Inc, which over the weekend opened its largest technical centre in Pune at an investment of Rs 1,500 crore, has termed the tax on intellectual property (IP) as a big "disincentive", even though it is bullish on India.

The American diesel engine specialist, which is celebrating 100 years, has been operating in the country for the 50-plus years. As a group, it collectively operates 21 manufacturing facilities in the country employing over 10,000.

"There are lots of complicated taxes in India. One such levy is the tax imposed on IP. We generate many IPs here in India and we use them in other markets as well. But we have to pay tax to government for this.

"While other countries give us tax discounts if we generate IPs, India taxes it. My feeling is that this really is a big disincentive to do R&D," Cummins Inc chairman and chief executive Tom Linebarger told PTI in an interaction over the weekend in Pune.

The Centre had imposed tax on transactions relating to intellectual property in the 1994 budget if the IP rights were classified as services and the states used to levy tax on IP rights if the transaction involving such were classified as sale/deemed sale of goods under state sales tax rules.

Under the GST regime, IP is taxed if the transaction value or the price actually paid or payable for the said supply of goods/services at 12 per cent (6 per cent each CGST and SGST).

Linebarger said though India has lowered the tax on IP to 10 per cent from 20 earlier and has also promised to bring it down to zero, it remains a "disadvantage" to do IP.

There are many challenges here but one of the biggest challenges is the off and on infrastructure development, he said, adding average development is good but still there are some sectors which are growing better than the rest while some others are growing not so well.

Sounding bullish on India, Linebarger said, "we are excited about India. Though it has had its strong times and weaker times, this country is full of resources and there is all-round dynamism. We need infrastructure and certain basic things properly. Right now we are very optimistic about the Indian market".

The government focus on infrastructure is having a big impact on our business here as the truck, construction, mining and marine industry is doing well now, he added.

Linebarger also lauded the GST implementation as "a big positive" for their the business because "everything that is of national standard is better for the businesses."

It can be noted on March 1 Cummins opened its largest ever technology centre in Pune investing Rs 1,500 crore. The 67,500-sq meter Cummins Technology Centre India, the work on which began in 2013, can seat 2,500 engineers and is equipped with world-class labs, engine testing cells and other engineering facilities.

The facility, which is the largest for Cummins across the world, houses 36 engine test cell slots, two turbocharger rigs, one emissions burner test rig, eight product-line specific labs, and nine shared services labs.

Cummins India, which has invested around USD 1 billion in the country in the past five years alone, is group of seven legal entities across 200 locations in the country and the group operates 21 manufacturing facilities.

The seven entities (including four JVs) are Cummins India, Cummins Generator Technologies, Cummins Technologies, Fleetguard Filters, Tata Cummins, Valvoline Cummins and Cummins Sales and Service.

Source: https://economictimes.indiatimes.com/industry/indl-goods/svs/engineering/taxing-ip-is-a-big-disincentive-for-rd-cummins-ceo/articleshow/63159221.cms

WASHINGTON: America's massive trade deficit with China is estimated to have resulted in about two million job losses in the US, the White House has said, defending President Donald Trump's decision to initiate strong actions against China's "unfair" trade practices. 

Trump imposed USD 60 billion of tariffs on Chinese imports to punish the country for its "unfair" seizure of American intellectual property, a move that could escalate the already tense trade relations between the world's two biggest economies.

Trump directed the US trade representative to level tariffs on about USD 60 billion worth of Chinese imports after a seven-month investigation into the intellectual property theft, which has been a longstanding point of contention in US-China trade relations.

China also announced retaliatory measures against the US.

A senior administration official told reporters: "By some calculations, every billion dollar of trade deficit that arises from market-distorted policies, costs us about 6,000 jobs. A very conservative calculation, by some estimates, is that trade deficit results in about two million more jobs in China and two million less here. This is a serious problem that the US side is keenly aware of".

China's "unfair" trade practices has resulted in a goods trade deficit of USD 370 billion, the official said.

The Trump administration said that it is for China to decide what course it wants to take.

"The point here is that China will have a choice as to how to respond, and they have benefited far more from this relationship than we have. We will certainly take that into account," the official said.

The typical American corporation that wants to go to China and sell its goods into the Chinese market is on the horns of a dilemma.

Responding to questions, the official said the concerns with Chinese economic practices are widespread throughout the United States and around the world.

"We have heard from many of our trading partners that they share many of these concerns," the official said.

Another administration official said China benefits far more from the US-China trade relationship than the US does.

Since 2001, when China joined the World Trade Organisation, its economy has grown from USD 1 trillion of GDP to USD 12 trillion; roughly an 800 per cent growth rate.

"During the same period of time, the American economy sputtered. It went from an annual growth rate of about 3.5 per cent between 1947 and 2000, down to around two per cent, which everybody wanted to say was the new normal for America. But the contrast between China's growth and its unfair trade practices, and what had happened to the US in terms of growth and wage growth, is quite startling," the official said.

Later State Department Spokesperson Heather Nauert said Trump has been very clear from the first day on the campaign trail, longstanding concerns that he has and administration-wide people have, with China's "unfair" trade practices.

"It's natural for us to have to address things that we don't agree on. One of them is certainly trade. The President has fought very hard for advancing opportunities, economic opportunities for American businesses, but also the American people," she said.

Senate Finance Committee Ranking Member Ron Wyden welcomed the decision.

"China has cheated, stolen and bullied American industry on trade for decades, causing massive economic wreckage to workers, employers and communities across America in the process. Our country must stand up against China's trade blackmail, so I am encouraged that the administration is focused on protecting the technologies that China publicly targeted," Wyden said.

Senator Sherrod Brown welcomed the news that the Trump administration is taking steps to launch crackdown on China's violation of intellectual property laws.

Business Roundtable said unilaterally imposing tariffs or other restrictions without a long-term strategy to bring about reforms in China will only raise prices in America, make American companies and products less competitive, and harm US workers and consumers.

"The administration should instead pursue a comprehensive approach centred around several strategic priorities. This includes working closely with our international partners to identify unfair trade barriers and practices that China must remove, setting deadlines for such reforms and outlining actions that the US will take if those reforms are not undertaken," it said.

Source: https://economictimes.indiatimes.com/news/international/world-news/trade-deficit-with-china-costs-2-million-jobs-to-us-white-house/articleshow/63426668.cms

BEIJING: China warned on Thursday that it was ready to retaliate as US President Donald Trump prepared to announce sanctions against Beijing for the "theft" of intellectual property.

"China will not sit idly by and let its legitimate rights and interests be harmed, and will certainly take all necessary measures to resolutely defend its legitimate rights and interests," the commerce ministry said in a statement.

Source: https://economictimes.indiatimes.com/news/international/business/china-vows-to-respond-to-us-tariffs-with-necessary-measures/articleshow/63411990.cms

WASHINGTON: The United States today dragged China to the World Trade Organisation, accusing it of unfair technology practices that run counter to the WTO rules.

The US Trade Representative, Robert Lighthizer, filed a request for consultations with China at the WTO to address Beijing's discriminatory technology licensing requirements.

The request comes a day after US President Donald Trump announced that he was directing the USTR to pursue dispute settlement in the WTO to confront China over its policies that result in unfair treatment for US companies and innovators trying to do business in China.

China appears to be breaking WTO rules by denying foreign patent holders, including US companies, basic patent rights to stop a Chinese entity from using the technology after a licensing contract ends, the USTR said.

In a statement, the USTR said China also appears to be breaking WTO rules by imposing mandatory adverse contract terms that discriminate against and are less favorable for imported foreign technology.

These Chinese policies hurt innovators in the United States and worldwide by interfering with the ability of foreign technology holders to set market-based terms in licensing and other technology-related contracts, it said.

As per USTR, the American US consultation request identifies apparent breaches by China of WTO rules, harming the intellectual property rights of US companies and innovators.

The US claims under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) relate to China's discrimination against foreign intellectual property rights holders (Article 3) and failure to ensure patent rights for foreign patent holders (Article 28). This is the Trump Administration's third WTO consultation request.

Noting that consultations are the first step in the WTO dispute settlement process, the USTR said if the US and China are not able to reach a mutually agreed solution through consultations, the Trump Administration may request the establishment of a WTO dispute settlement panel to review the matter.

Following a memorandum from President Trump, on August 18, 2017, the US Trade Representative initiated an investigation under Section 301 of the Trade Act of 1974 into the government of China's acts, policies, and practices related to technology transfer, intellectual property, and innovation.

Following a thorough analysis of available evidence, USTR, with the assistance of the interagency Section 301 committee, prepared findings showing that, among other acts, policies, and practices, China uses discriminatory licensing requirements to transfer technologies from US companies to Chinese companies.

China's measures of concern include the Regulations of the People's Republic of China on the Administration of the Import and Export of Technologies and the Regulations for the Implementation of the Law of the People's Republic of China on Chinese-Foreign Equity Joint Ventures.

China's measures provide less favorable treatment of foreign entities than the comparable treatment of domestic Chinese entities under the Contract Law of China, USTR alleged.

Source: https://economictimes.indiatimes.com/news/international/us-drags-china-to-wto-on-discriminatory-technology-licensing-requirements/articleshow/63433503.cms

NEW DELHI: Commerce and Industry Minister Suresh Prabhu today said he has directed the ministry to formulate a plan to grant patents at the earliest.

Over 2.32 lakh patent applications were pending with the Indian Patent Office as on November 30 last year.

He said that the ministry is taking steps such as modernising patent offices for effective implementation of intellectual property rights (IPRs) laws.

Prabhu said, I have directed my ministry to prepare a plan to release patents at the earliest possible time, which will be given to me in a few weeks.

He was speaking at the Leadership Summit on Anti-Counterfeiting and Brand Protection here.

Usually, it takes about 6-7 years for grant of a patent. The ministry is working to significantly cut this time.

In 2016-17, 9,847 patents were granted by Indian Patent Office as against 6,326 in the previous year.

Prabhu also said that the ministry was preparing a module for law enforcement agencies, including the police department, to enforce IPR rules.

Intellectual property-related crimes are different and it is difficult to understand IPR law violations, "so we are sensitising the police," he added.

Source : https://economictimes.indiatimes.com/news/economy/policy/plan-for-timely-grant-of-patents-in-works-suresh-prabhu/articleshow/63314076.cms

Last week, we brought to you news of yet another well reasoned and lucid order from a Division Bench of the Delhi High Court (comprising Acting Chief Justice Gita Mittal and Justice Hari Shankar) in our Patent Working PIL (see here and here).

This order (dated February 7, 2018) is now available on the Delhi High Court website here. The order again reiterates the importance of the patent working disclosure requirement and expresses dismay at the fact that the petition had been filed way back in 2015 and nothing had been done as yet. Here is what the court says:

“Given the fact that this writ petition complaining of several pitfalls, illegalities as well as the admitted position on the part of the respondents that Section 146 of the Patents Act, 1970 has not been effectively worked, was filed as back as in the year 2015, this matter ought to have engaged the attention of the respondents long ago.”

“It is also astonishing that the matter has proceeded in this manner for a long period of 45 years since the statute was enacted. Be that as it may, expeditious steps regarding the working of the statutory provisions as well as the changes, if any, are required in the statute, rules and prescribed forms deserve to be taken.”

Clarification on Patent Licensing Confidentiality

The order then goes on to provide some clarity in terms of what aspects of a patent licence need to be disclosed to comply with Section 146 (the statutory provision containing the patent working disclosure requirement), without unduly compromising confidential business information. As we’d noted in our earlier post, Ericsson took issue with the court’s observation in para 13 of its January 10 order that “the details of licensees, licenses and sub-licenses” are not confidential and are required to be submitted by the patentees while submitting Form 27. It argued that it may not always be possible for the patentee to disclose all the terms of the license. The court therefore clarified as below:

“It is, therefore, made clear that the reference in para 13 of the order dated 10th January, 2018 to “details of licensees, licenses and sub-licensees” is only the specification with regard to number, date and particulars of the licensees and sub-licensees. In case, any party has reservation of any kind in furnishing details, it would have to disclose the reasons for such reservation and the patent office would be required to take a view in the matter so far as its satisfaction regarding compliance with the requirements of Section 146 is concerned.”

The court however made clear that a patentee could not, under the guise of confidentiality, refuse to disclose the very existence/factum of licenses and the names of licensees. The court noted the arguments of Abhimanyu Bhandari, counsel for the petitioner, who had stressed the importance of Section 67 of the Patents Act which requires a mandatory disclosure of the existence of the licenses and the names of licensees. Section 69 only permits the patentees to request the Patent Office to secure the confidentiality of terms of the license. However, the existence of the license and the names of licensees are to be a part of the register which is open to public inspection under Section 72.

To quote from the courts’ ruling in this regard: “In this regard, Mr. Bhandari has drawn our attention to Section 67 of the Patents Act which requires a register of patents to be maintained which contains the names and particulars of licensees. The information which is required to be furnished must comport to the requirements of Section 67 of the Patents Act as well.”

Natco’s Compliance with Working?

As noted in our earlier post, Natco objected to the petitioner’s contention that it had not filed the relevant working information over its sales of the generic version of Nexavar, a patented drug over which it had been granted a compulsory license. In an earlier post, we’d noted that our assertion in this regard was backed up by two RTI responses from the patent office, which affirmed that Natco had not submitted this information.

If indeed Natco had submitted this information, then clearly the Patent Office’s answer to our RTIs was incorrect. Further, Natco’s own admission in its intervention application suggests that it is yet to comply with this mandate in full, since it has not yet submitted Form 27 format information for the years 2013 and 2014. As we’d noted in an earlier post:

“Has Natco complied with the mandate to submit working information under Form 27?  Not so! In their intervention application filed before court, they’ve attached Form 27 filings in this regard for 2015 and 16, but not for the previous years (2013 and 2014). They admit that they hadn’t filed this for some years. So clearly, by their own admission, they are not in full compliance. And yet they have the temerity to allege that I made false allegations against them for personal private gain! While they are “bonafide”! Here again, something appears to be amiss, since when we checked the patent office website as late as 2016, we didn’t see any Form 27 filings from Natco for the year 2015.”

The judges however were careful to not make any factual determination in this regard, for this public interest petition is not about whether individual patentees have complied or not with the patent working requirement. And the court can hardly be expected to make individual determinations in this regard. Rather this petition is about systemic non-compliance and inaction by the Government and the court’s response thus far has been to treat it as such. Here is what the court said in this regard:

“It is submitted by Ms. Rajshree, learned counsel appearing for the applicant in CM No. 2108/2018 that, in paras 7 to 9 of our order dated 10th January, 2018, this court has noted the submission on behalf of the petitioner that the applicant has not furnished the information in terms of Section 146 of the Patents Act, 1970. We may clarify that this court has only noted the submission of the petitioner in this regard and has not expressed any opinion on the merits of the petitioner’s contentions.”

Reforming Form 27

A key part of the order also agrees with the representations by the various counsels/parties to this litigation (petitioner and intervenors etc.) that Form 27 should be amended in order to make for a better working disclosure format. Here is what the court says in this regard:

“During the course of hearing, all the learned counsels have pointed out that one of the major difficulties in ensuring compliance with the provision of Section 146 of the Patents Act, 1970 is the manner in which Form-27 has been worded. It is submitted that this form was notified in the year 1970, and though amended in the year 2003, has failed to take into consideration the several scientific and technological requirements as well as the confidentiality issues relating to some of the patents. We are informed by Mr. Amit Mahajan, learned CGSC that he has been instructed that the matter needs a relook.”

The Delhi High Court then goes on to direct the Government as below:

“In view thereof, the respondent no.1 shall place before this court, within two weeks from today, the timeline regarding the manner in which the steps required for effecting the necessary modification to the prescribed forms would be undertaken. The same shall be placed on affidavit before us within this period with advance copy to all parties through counsels who are represented before us.”

In short, the Government is to file an affidavit within two weeks spelling out how it will reform Form 27 and also how it proposes to put in place an enforcement mechanism against errant patentees. The matter has now been listed for 1st March.

In the next post we’ll bring you a more detailed analysis on the need to reform Form 27, a point we raise significantly in our petition.

P.S.: Ashutosh Gambhir of Bar & Bench carried an excellent summary of the Delhi High Court order here.

Source : https://spicyip.com/2018/02/patent-working-pil-update-court-clarifies-patent-licensing-confidentiality-and-suggests-form-27-reform.html