IP WISH LIST OF INDIA

On the eve of New Year Brain League wishes a very “HAPPY NEW YEAR” for Intellectual Property.

We wish,

1. A bill for establishing a separate forum for hearing the patent matters be initiated;

2. For capacity development of the Indian Patent Office be in order to increase the velocity of  examination;

3. The prosecution history of the patent application is made available;

4. Digitization of complete patent application;

5. For development of Jurisprudence on Indian Patent Law;

6. For initiation of policy on Patent term adjustment;

7. For establishment of a expert forum for patent practitioners;

8. Patent agent exam will be organized online and use of Patent Act should be permitted;

9. All patent offices should be allowed to accept Design Patent;

10. Trademark dilution to be considered as separate cause of action;

11. Trademarks search is made available for free;

12. Logo search is made available for Trademark;

13. The online filing system is made more robust;

14. Time line for issuance of trademarks is reduced;

15. For increase in number of copyright offices;

16. The use of copyright by disabled is considered as “fair use”;

17. Amendment with respect to DRM is expedited;

18. Geographical indications grants are limited to indicators of source.

Please feel free to add your wishes in this list.

Once Again we all wish you a very “IP NEW YEAR”

Regards
Brain League Team

Indian Patent Revocation : Shining Industries and Anr. Vs. Shri Krishna Industries - Case 3

The patent holder, Respondent, holding a patent relating to a locking mechanism filed a case against the Appellants claiming patent infringement and in response the Appellants counter-claimed for revocation of the patent based on lack of novelty and inventive step among other grounds.

The Court compared the locking mechanism with prior art and held that the patented invention lacked novelty and inventive step and is therefore, liable to be revoked. It stated that the mere fact that the shackle of the old lock contained one groove and the shackle of new lock contains three grooves, or that in the old lock one arm of the shackle remained attached to the lock with a pin on opening it, while in the new lock both the arms of the shackle come out, or that the old lock contained an inner housing only on two sides, while the new lock contained an inner housing on all the four sides did not bring about any new change in the lock. As per the Court, the system remained the same as in the prior art. Though the patented lock required 70-80 keys as opposed to 7-8 keys required by the locks in the prior art, the Court observed that it was because of the increase in the grooves and that such a difference in the working of the two locks could not amount to an improvement which would constitute an inventive step.

In the light of the two prior art patents cited in the case, the Court stated that the locking mechanism and the lock claimed in the Respondent’s patent were not different from the locks specified in the prior art patents. As the system and the mechanism in the patented lock were the same as the cited patents, the Court concluded that the invention lacked novelty and inventive step and held that the patent was liable to be revoked.

Indian Patent Office to take the help of CSIR for recruiting patent examiners

In an interview, Mr. P H Kurian, the Controller General of Patents, Designs and Trade Marks, said that the Indian Patent Office (IPO) will be signing an agreement with the Council of Scientific and Industrial Research (CSIR), whereby CSIR will be responsible for recruitment of patent examiners for the IPO. An increase in the number of examiners will help the IPO in whittling down the backlog of patents awaiting examination.

This is a welcome move as the CSIR , which already has a dedicated recruitment assessment board to to select technical candidates, will be able to able to use its technical knowledge to screen candidates technically and hence identify potential examiners with the best technical knowledge and skills.

Case Note: Nokia continues its fight against Apple in the International Trade Commission

Nokia filed a complaint with the United States International Trade Commission (USITC) against Apple stating that all of Apple’s products, including phones, music players and laptops, are violating 7 of Nokia’s patents. The seven Nokia patents in this complaint relate to the areas of user interface, camera, antennas and power management technologies.

This is can be seen as a third front in the battle between Apple and Nokia over technology mainly relating to wireless technology and user interaction. The first front was opened by Nokia when it filed a case against Apple accusing Apple of infringing 10 patents. Then, Apple counter sued denying the infringement and accusing Nokia of violating 13 patents.

The USITC has the power to block imports of infringing products in the US, which might have repercussions for Apple, as most of the Apple devices are manufactured in Asia and then imported into the US.

Open the Traditional Knowledge Digital Library

This post is in furtherance of Vini's post, which throws light into the third party reference provided by CSIR to a patent involving Melon extract. Vini's post briefly explains the background of TKDL and I dont wish to delve into it in my post. I would like to bring a few issues with respect to TKDL to your notice and solicit your opinion with respect to an open source model I am trying to develop for TKDL.

Dr. Mukherjee from CSIR was a speaker at one of the seminars I had attended at IITB. He is one of the key members in the TKDL project and gave an excellent overview of TKDL (Traditional Knowledge Digital Library), process followed by CSIR with respect to digitization of traditional knowledge and the method of classification in the database. After the talk, one of the speakers asked if TKDL will be made available to Indian scientists. In response, Dr. Mukherjee stated that they are considering the issue and may make it accessible to Indian scientists for limited purposes. He went on to state that the primary purpose of TKDL is to prevent misuse of traditional knowledge and that they have been successful in doing that in some cases such as turmeric, neem, melon and so on by filing patent opposition or revocation proceedings and indicated that open access to TKDL may not be a possibility.

It seems to me that CSIR either forgot the objective of creating TKDL or had always been having a very narrow perspective about its utility. As a student, I had the opportunity of attending a lecture of Dr. Gupta at Pierce Law in which he explained the value of TKDL to be beyond preventing patent protection. As explained by Dr. Gupta, most of us believe that the primary role of TKDL is to capture India's traditional knowledge for purposes of its preservation and development. If that is the primary goal, opposing and revoking patent applications or patents is just one of its by products. Considering that the primary objective of TKDL is to preserve and develop traditional knowledge, making TKDL publicly available would further its objective in the most optimal manner because it will enable access to India's traditional knowledge to the entire world, who may work on it and develop over it. It will also prevent duplicative efforts of scientists and will facilitate collaborative research. In the light of our culture, I believe that open development would be the best possible approach.

Some may argue that making TKDL available may hurt the interests of traditional knowledge holders, who have been preserving it by depriving them the benefits of commercialization of such development. I would like to argue that appropriate laws and regulation can ensure benefits to traditional knowledge holders. The proposed Traditional Knowledge law in India can incorporate provisions to safeguard their interests in a stronger manner than under the Biodiversity Act.

I think the Indian Government and CSIR must open their eyes and make TKDL accessible to the world at large rather than limiting it to US Patent office or European Patent Office. The value of TKDL must be more than preventing or revoking patent protection. Furthermore, Numerous patents get rejected based on prior art and if a patent is rejected based on prior art in TKDL, it does not always mean that some one tried to surrepticiously get a patent that is India's knowledge, it just means that there is a prior art against grant of a patent over an invention, which resulted in its rejection or revocation. It must be noted that numerous patents get rejected based on prior art references from multiple sources on a daily basis.

In the light of the issues concerning traditional knowledge, I believe that the open source model would be most suitable for TKDL.Making TKDL available under an open source model that enables its usage, ensures attribution and sharing of benefits, would go a long way in its development and safeguarding the interests of the communities preserving it. As courts across the world have been increasingly holding that open source licenses are legally valid and enforceable, the model will enable development while preserving the rights of traditional knowledge holders. As I work on developing a comprehensive open source model for TKDL, any comments on issues to be considered are welcome.

Survival of the Fittest: Will the melon extract patent survive the TKDL attack?

The recent buzz going on in the patent world questioning the patentability of the Melon extract patent got me interested in the issue and forced me to check the prosecution history of the patent application provided in the EPO register. One thing led to another and I found my self analyzing the patentability of the invention which I though t is worth sharing with you all. Your critical comments and feedback are welcome.

The Patent application no.EP1747786 filed by a Spanish enterprise by the name PERDIX EUROGROUP S L deals with a natural product based on vegetal ingredients with anti-vitiligo therapeutic properties. The patent seeking composition includes ingredients such as extracts of Pimiemta racemosa (West Indian Bay tree), Citrus aurantifolia (Lime) and Cucumis melo (melon) among others.

The application initially consisted of 7 claims which were objected to as they were not submitted in the required claim format. Also, inventive step related objections were raised by the EPO. In order to overcome the objections raised by the EPO during prosecution, a new set of 3 claims were submitted on 16th of December, 2008. The first two claims were focused on the medicinal preparation and the third claim dealt with the use of the said medicinal preparation for treatment of Vitiligo. In response to the amended application on 4th June, 2009 the EPO communicated to the applicant its intention to grant the patent.

On 8th July, 2009 a third party observation was sent by Council of Scientific and Industrial Research, India (CSIR) for consideration by the EPO, stating that the use of Cucumis melo (melon extract) for treatment of leucoderma or vitiligo through local application was traditionally known in India and has been entered in the Traditional Knowledge Digital Library (TKDL) which is accessible to the EPO. Relevant prior art with regard to the same from printed books of Ayurveda, Unani and Siddha were also submitted.

For readers who haven’t heard of TKDL, TKDL is a repository of traditional knowledge provided in the Ayurveda, Siddha and Unani medicine which includes over 2 lakhs formulations. Access agreement for the same has been signed with USPTO and EPO. EPO was granted the TKDL access starting February 2009. The CSIR website claims that four EPO patents were withdrawn in the light of the information provided in TKDL in between August to November 2009.

(To Read more: http://www.tkdl.res.in/tkdl/langdefault/common/Abouttkdl.asp?GL=Eng)

Focusing on the purpose of this blog post, I would like to discuss the patentability of EP1747786 in the light of the prior art relating to the use of melon extract for treatment of anti-vitiligo. Being an EPO application, the patentability standards provided by the EPO shall hold true for this analysis.

In the light of Article 52(1) EPC, patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application. I have restricted my analysis to Novelty and Inventive step analysis.

As per Article 54(1) of EPC, an invention is considered to be new or novel if it does not form part of the state of the art. It must be noted that novelty analysis is carried out by comparing the invention with a single prior art reference at a time. If all elements in the invention forms part of a single prior art reference, then such an invention would lack novelty in the light of that prior art reference. A similar analysis has to be done for each relevant prior art reference.

The invention of the patent application deals with a medicinal composition comprising of extracts of Pimiemta racemosa, Citrus aurantifolia and Cucumis melo along with Coenzyme Q10 and Pyridoxine Chlorhydrate.

The TKDL reference describes the use of Melon extract for treatment of anti-vitiligo. Since the composition provided in the patent application comprises of other essential components in addition to the melon extract, all elements of the invention are not present in the prior art. Hence, in the light of this prior art the patent application can be considered as Novel.

Furthermore during prosecution, the examiner identified several prior art references which provided for each of the component stated to be part of the formulation provided in the invention. Since none of the prior art reference had all the components, a novelty objection was not raised.

Moving forward to the requirement of Inventive step, Article 56 of EPC states that an invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. In other words, to ascertain inventive step, the invention should not be obvious to a person having ordinary skill in the art, in the light of combination of prior art references.

Objections were raised by the examiner during prosecution stating lack of inventive step in the light of combination of prior art references. However, the applicant provided sufficient information to distinguish the invention from the other prior art references cited in the search report. To mention a few, the applicant pointed out that prior art concerning to Pimiemta racemosa would not be of relevance since the prior art claims the extract for its anti inflammatory properties where as in the patent application it is used for its antioxidative properties which was not known in the prior art.

With regard to the prior art identified by EPO with regard to the use of melon extract, the applicant stated that melon extract in the patent application is used for its catalase activity as opposed to the superoxide dismutase activity claimed by the prior art patent.

Furthermore, the applicant amended the application to include purpose limited restrictions to the claims thus reducing the scope of protection seeked by the claim.

Coming back to the TKDL reference, detailed information with regard to the TKDL reference needs to be provided to conduct a fair analysis with regard to inventive step. Unfortunately, since the TKDL access is restricted to Indian patent office, EPO and USPTO, patent enthusiasts like us may not be able to study the issue in its complete spirit.

Based on my analysis in the light of limited information, I believe that, since the applicant has successfully managed to show inventive step in the light of all other prior art references which also includes a US patent application relating to the use of melon extract for treatment of anti-vitiligo, it should not be difficult for the applicant to prove inventive step in the light of the melon extract reference provided by TKDL as well.

After all, the TKDL reference may not be successful in negating the inventive step of the Patent application no. EP1747786. However, the Patent Offices never fail to surprise me. Let’s wait and watch!

Case Note: Farbewerke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning Corporation Vs. Unichem Laboratories, - Indian Patent Revocation Case 2

 The case related to a patent in respect of the manufacture of new sulphonyl-ureas, salts of those compounds and of anti-diabetic preparation containing such compounds. The patent holder filed an infringement suit against the Respondents claiming that the manufacture, preparation and sale of Uni-Tolbid tablets by Respondents infringes its patent. In response, the Respondents argued that the patent was liable to be revoked due to insufficiency of disclosure and lack of novelty, inventive step and utility.

The Court first reviewed the disclosure made by the patent holder and concluded that the specification had sufficient disclosure. It stated that a conventional manner of eliminating sulphur as specified in the claims was well known and support in the written description was not required for the same. It further observed that the statement in the body of the specification that the synthesis of the desired sulphonylurea may be obtained by eliminating sulphur with a heavy metal oxide or a salt thereof in an aqueous or alcoholic solution would not present any difficulty to a person skilled in the art to carry out the invention. As per the Court, the specification and claims were addressed to those with a high degree of knowledge of the field of science to which they relate, particularly when they relate to chemistry and allied subjects and therefore, it was not necessary to describe processes on the Claims to a specification when they were part of the common knowledge available to those skilled in the science who can, after reading them, refer to the technical literature on the subject for the purpose of carrying them into effect. As the embodiments of the invention were sufficiently described in the specification with number of examples that the invention could be easily carried out into effect, the Court concluded that the invention was sufficiently described in the specification.

The Court then analyzed the novelty and inventive step of the invention in the light of prior art. Though it was known that amino-sulphonamides had anti-diabetic properties and many sulphoylureas were also known, the Court observed that they were all with the wrong radicals at either end and it was not known that they could have anti-diabetic properties if they were activated by certain radicals. As in the light of state of knowledge, it was not possible for a skilled chemist to predict that anti-diabetic preparation could be obtained by constructing a molecule with a sulphonylurea in the middle and carefully planting lumps of radicals at either end, the Court stated that the patented invention was novel and inventive. Furthermore, though Carbutamide and sulphanamides were well known as hypoglycemic agents, the Court stated that they could not be used for prolonged periods of time as they gave rise to toxic effects. It pointed out that the difference in the respective chemical compositions of Carbutamide and Tolbutamide of the patent holder was that the latter had the methyl group (CH. 3) in place of the amino group (NH. 2) which occurred in the former in the para position in the radical R, The Court then concluded that the substitution of CH. 3 in the para position for NH. 2 by the patent holder removed the toxic effects and was the inventive step in the invention. As the compounds claimed in the patent had blood sugar lowering properties without toxic effects, the Court stated that the patented invention possessed utility.

In the light of its analysis, the Court held that the patent was valid and was not liable to be revoked because the invention possessed utility, novelty and inventive step and was sufficiently disclosed.

Joke reported in Times of India

Today (Dec 28, 2009), Times of India (TOI), Bangalore, has published a news article relating to patents on the front page. Since the article was related to patents, it caught my attention and I decided to read what the article had to say. After reading the article, I could not help but wonder how minimal is the research that goes into writing an article that gets published on the front page. A simple internet search to understand a few concepts could have resulted in an article of better quality.

My interpretation of what the article tries to convey 

India has 424 biotech companies, however only one US design patent has been granted to an Indian company between 2001 and 2008. Further, despite initiatives launched by government in the past 3 to 5 years to give a boost to this industry, Indian companies lag in product design, because of which only one design patent has been granted between 2001 and 2008. In light of the aforementioned finding, officials of Department of Bio-Technology (DBT) have made the following comments:

"In general, the Indian industry is risk-averse. This is probably a reflection of the reluctance of Indian banks and investors to invest in biotech ventures. Industry-led R&D is still not adequate in scale and quality when it comes to innovation and discovery research."
 

"Of these, merely one is a design patent. Clearly, the big challenge in front of us is the scaling up of Intellectual Property." 

My take on the article

Indian Patent Revocation: Laxmi Dutt Roop Chand Vs.Nankau.- Case 1

In this case, the Appellant, Laxmi Dutt Roop Chand, the patent holder of a patent relating to the . process of manufacture of hollow wares filed a patent infringement suit against the Respondents, Nankau and others. In response to the infringement suit of the Appellants, the Respondents claimed non-infringement and counter-claimed for revocation of the patent on the grounds of lack of novelty and inventive step.

After reviewing and hearing the arguments of the parties and relevant prior art, the Court held that the patented invention lacked novelty and inventive step. As hollow-wares were being prepared at Bandhua with the aid of darjas for about 25 or 26 years before the date of the patent, the Court held that the invention lacked novelty. It further held that the invention on the date of the patent was not a manner of new manufacture nor did it involve any inventive step having regard to what was publicly known in the field of manufacture of hollow wares and therefore, lacked inventive step.

Statistics of PCT International Applications filed in India (2003 to 2008)

During the period 2007-2008 total number of PCT application filings done in India was 707 as compared with 534 during the period 2006-2007, which shows a increase of approximately 33%.
The table provided below gives the statistics of PCT applications filed from India during the last five years.

YEAR	INDIVIDUAL	LEGAL ENTITY	TOTAL
2003 - 2004	102	328	430
2004 - 2005	105	351	456
2005 - 2006	130	352	482
2006 - 2007	144	390	534
2007 - 2008	169	538	707

Authored by Kumar Anjani

CABINET’S CHRISTMAS GIFT TO CINEMATOGRAPHIC INDUSTRY

The awaited Copyright bill is finally approved by the Cabinet on December 24th and the same will be presented before the parliament during the upcoming budget session in February 2010.

The bill is long awaited by the Cinematographic industry as one of the key amendments proposed in the bill is to extend the copyright protection to both director as well as producer as joint authors, earlier the copyright was vested only in the directors of a Cinematographic work. Also the term of protection is suggested to be extending upto 70 years. The cause for the same is believed to be the increasing use of the movies, their titles, dialogues or characters, whose copyright term had got over, in the small screen industry i.e., television serials.

Other key amendments introduced wide this bill are:

• Statutory licence for version recordings and authorship to ensure that while making a sound recording of any literary, dramatic or musical work the interest of the copyright holder is duly protected,
• Term of copyright for cinematograph films has been extended by making the Producers and Principal Director as joint authors,
• The period of copyright for photographers is proposed to be enhanced to “Life plus sixty years” instead of only sixty years as at present
• A copyright term of 70 years to Principal Director which automatically extends the copyright term for the Producers for another 10 years provided he enters into an agreement with the Director,
• The period of copyright for photographers is proposed to be enhanced to “Life plus sixty years” instead of only sixty years as at present,
• An amendment is proposed to ensure that the authors retain their right to receive royalties and the benefits enjoyed through the copyright societies
• Amendment for ensuring that the authors of the works, particularly songs included in the cinematograph film or sound recordings, receive royalty for the commercial exploitation of such work
• Amendments are being made for incidental changes, which are required in the context of digital technology to cover "storing of copyrights material by electronic means",
• The Moral Rights of Performers” are proposed to be introduced in a new section,
• The existing Performers’ Rights are proposed to be further enhanced by introducing a new section to provide exclusive rights compatible with WPPT
• Through a new section in the Act, it is proposed to ensure protection to the Right holders against circumvention of effective technological measures applied for purpose of protection of his rights like breaking of passwords etc. while maintaining an appropriate balance between the interests of the right holders on the one hand and of Technology innovators, Researchers and Educational Institutions on the other
• Amendments to protect the interests of researchers, students and educational institutions so as to ensure that Technological Measures do not act as a barrier for further development of the technology.
• A fair deal clause to allow the production of copies of copyright material in formats specially designed for the physically challenged.
• A separate compulsory licensing provision has been proposed to allow for publication of copyright works in formats other than specifically suited for the physically challenged,
• Enforcement of rights such as border measures, disposal of infringing copies and presumption of authorship under civil remedies.

These amendments also address the issue of access to information in the digital context and the liability of Internet service providers. The amendment aims to bring the act in conformity with the Internet Treaties of WIPO, namely WIPO Copyright Treaty (WCT) and WIPO Performances and Phonograms Treaty (WPPT) which have set the international standards for the same.

Santa Claus for Real!

Today being Christmas, I thought it would be interesting to go through a patent that would enhance the Christmas effect. While browsing through the granted patent database on USPTO for patents that included the word 'Christmas' in its abstract, I was pleasantly surprised to find over 900 granted patents. Most of them dealt with Christmas trees and Christmas decorations. However one particular patent that caught my eye and instantly brought a smile on my face.

The patent titled 'Santa Claus visit kit' bearing the Patent no. US7258592 was granted on August 21st 2007. The assignee of this patent is an Individual inventor by the name John Colak who filed for the patent on August 26, 2004. The Patent claims a kit for creating an illusion of Santa Visit in the premises. The kit is mainly directed towards Child audience including several amusement items to keep them interested. However, I believe the highlight of the patent is the provision for making boot print resembling marks to mark an illusionary trail of Santa Clause in the premises.

So after enjoying the Christmas cakes and Wine, if you find time, this patent would be a fun read.


On behalf of all my fellow bloggers on SINAPSE I wish all of you Merry Christmas and a Happy and Prosperous New year.

Another patent settlement

2009 has been the year of patent settlements. As I had been pointing out in my earlier posts, companies are preferring to settle patent cases rather than fighting them. I am hereby reporting another settlement that involves an Indian company.

Lupin filed an application for Para IV certification and challenged the validity of Forest's patent relating to 'Namenda' tablets used for treatment of Alzheimer disease. The patent litigation between the parties started thereafter.The companies have now settled the patent litigation. As per the settlement, Lupin can launch the generic version of the tablets in 2015 or earlier under certain circumstances.

Could exclusivity be claimed over the word “IMPERIAL” for alcohols? Read on…….

The plaint was filed by Pernod Ricard S.A. France and Ors. alleging that the defendants’ (Rhizome Distilleries P. Ltd. and Ors.) whisky, Imperial Gold, was an imitation of and was structurally, as well as phonetically, similar to the Plaintiffs reputed trademark IMPERIAL BLUE and the registered trademark IMPERIAL RED. Also, the Defendants were said to have imitated the ROYAL STAG whisky label, in both the front and the rear panels. The whisky label was said to have used the trade dress which was an imitation of the ROYAL STAG trade dress in respect of colour combination, get up, shape and design of bottle and ROYAL STAG label. 

The bottling styles of the Plaintiff and the Defendants are shown below:

Pernod Ricard claim to be the world’s co-leader in wines and spirits. They have their presence on every continent and sell alcoholic beverages across the world. Some of their brands are ROYAL SALUTE, CHIVAS REGAL, BEEFEATER, BALLANTINES, KALHUA, BLENDERS PRIDE etc. One of their brands, IMPERIAL BLUE is a registered trademark in India since 1997 as is IMPERIAL RED and ROYAL STAG. 

The Defendants, Rhizome distilleries, is a distillery unit in the state of Andhra Pradesh-India. Their brand, IMPERIAL GOLD, is also a registered trademark in India and was being sold in Hyderabad and Delhi.

The suit filed by the Plaintiffs was for permanent injunction restraining infringement of registered trademark, copyright, passing off, dilution, unfair competition, rendition of accounts of profits , deliver-up etc.

The Civil Court ruled in favour of the Plaintiff and the Defendants were restrained from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in whisky or any other alcoholic beverages under the trademark Imperial Gold or the impugned label/trade dress pertaining thereto or any other trademark/label/trade dress as may be deceptively similar to the trademark of the Plaintiff/Respondent viz. IMPERIAL BLUE, IMPERIAL RED or ROYAL STAG. 

The Defendants appealed against the ruling in the HIGH COURT OF DELHI. The Appellants argued that the Plaintiffs were aware of the Defendants’ application for registration of their brand and intention to manufacture and sell their brand. They contented that since the Plaintiffs had allowed the Appellants to build a reputation and substantial sales for their brand, IMPERIAL GOLD, an injunction ought not to have been granted. They also argued that no exclusivity can be claimed for the use of the word IMPERIAL which is not just to be found in common parlance, but is also an obvious choice for whisky etc. because of the laudatory effect it has on the product.

The learned Single Judge passed a Judgment after perusing through a plethora of precedents cited at the Bar, one among which was the case Payton & Co. v. Snelling Lampard & Co. (1900) 17 RPC 48. The case highlighted the principle to be borne in mind in passing off action as to the scope of a buyer being deceived. In the case, Lord Romer, LJ had said that “it is a misconception to refer to the confusion that can be created upon an ignorant customer”. In another case (Schweppes' case) Lord Halsbury had said that “if a person is so careless that he does not look and does not treat the label fairly but takes the bottle without sufficient consideration and without reading what is written very plainly indeed up the face of the label, you cannot say he is deceived”. 

The HIGH COURT had this to say: “It is our analysis that no exclusive or proprietary rights can be claimed by either of the parties before us in respect of the word IMPERIAL which is not only in common parlance to be found in every dictionary, but also is laudatory in nature as it alludes to royalty or grandeur. With respect, we are not convinced that IMPERIAL refers only to royalty, empowering only such persons to take litigative umbrage. Illusions of royalty and grandeur are one of the sentiments resulting from imbibing spirits, and, therefore, IMPERIAL may justifiably be seen as descriptive”. 

The HIGH COURT also opined that Plaintiffs/Respondents had adequate knowledge of the Defendants intention to use the trademark IMPERIAL GOLD; however the Plaintiffs did nothing as the Defendants’ sales grew and the Defendants had obtained a substantial share of the market. Delay and acquiescence had thus stepped in to counter the Plaintiffs claim for an ad interim injunction. 

It will be interesting to note whether in the future the term IMPERIAL is given the same treatment if chosen as a trademark for another set of goods/services other than Alcohol.

Authored by Fenil Jose

Small business innovative research Initiative (SBIRI) scheme from Department of Biotechnology

Department of Biotechnology has introduced a scheme to fund projects of small business innovative research Initiative. The scheme has become immensely popular as almost 56 Successful SBIRI applicants are listed for the scheme as on 26/11/2009. The aim of the scheme is to encourage small and medium scale industries to take up risk in innovative R&D in biotech sector.
The intellectual property generated from the Project shall be the joint property of the Industry and DBT (in case of single industry) or whoever (Industries or DBT) contributed for generation of the intellectual property in case of collaborative project shall own the intellectual property.
DBT is funding only for projects through this scheme. However, responsibility of protecting the intellectual property generated from the Project shall be on industries. Normally, the agreement between the industry and DBT specifies that the intellectual property generated should be utilized by the industry in one year from the project or patent grant other wise the DBT shall have alright to license the property to third party.
In the initial stage of funding, the project should not be published or presented till it is being reviewed by project Monitoring Committee (PMC). Both the parties i.e. industries and DBT are bound to confidentiality clause in the funding agreement. No parties to the agreement shall transfer the right in intellectual property to third party without the consent of DBT.
Department of Biotechnology coordinates the scheme through establishment of an agency called SBIRI Management Agency (SMA). Currently, Department of Biotechnology has appointed M/s Biotech Consortium India Ltd. (BCIL) as SMA. Every project shall be monitored periodically by project Monitoring Committee (PMC) constituted by the department. The funding through the scheme is done in two phases depending on the investment in the project by companies. The funds will be given under the scheme to the participating industry and collaborating partners in installments, the first one on signing of the Agreement and the subsequent installments on satisfactory progress of the project as determined by the Apex Committee of SBIRI (ACS).
The funding structure has two phases as provided in SBIRI website.
Under the phase I:

• If the actual project cost is upto Rs. 25 lakhs, 80% of the project cost will be available as a government grant.

• If the actual project cost is between Rs. 25 lakhs and Rs. 100 lakhs, 50% of the project cost will be available as government grant subject to a minimum of Rs. 20 lakhs and maximum of Rs. 50 lakhs.

• If the project cost is beyond Rs. 100 lakhs, in addition to the Govt. grant of Rs. 50 lakhs, the unit will be eligible for interest free loan upto 50% of the amount (subject to a limit of Rs. 50 lakhs as loan) by which the total project cost exceeds Rs. 100 lakhs.

Under phase II:
The scheme provides soft loans upto Rs. 10 crores according to the requirement of the project. There shall be minimal interest if the funding is more then 100 lakhs. The partner in the public institution at this stage will get the R&D support as grant.
For further terms and conditions please visit the following link http://sbiri.nic.in/HTML/tc.html.
Repayment of the loan
Repayment of the loan by the industry to the DBT in phase I of the scheme shall be in ten annual installments and recovery shall commence six months after the scheduled completion of the project. In case of delay in repayment simple interest around 12% per annum will be applied. If there occurs two successive defaults in repayment then or if the in the event of foreclosure of the project the outstanding amount shall have to be cleared immediately. The amount may be recovered even through land revenue.
Repayment of the loan by the industry to the DBT in phase II of the scheme shall also be in ten annual installments and recovery shall commence six months after the scheduled completion of the project. However, there shall be a Simple interest @ 1 % or 2 % (as applicable ) per annum shall be payable on the loan amount up to Rs. 100.00 lakhs or for loan in excess of Rs. 100.00 lakhs from the date of release of funds to the Industry.
The project implementation period shall be the moratorium period and during this period, there shall be no liability for repayment of installments of loan and interest. However, entire interest accrued up to the repayment including interest accrued in moratorium period shall have to be repaid in two equal yearly installments.
Following are few documents and forms that have to be submitted:

1. Budget details of the project as agreed by both the parties
2. Complete Project document with agreed timelines
3. Schedule of repayment of loan and interest- maintain the repayment record as annexure 3
4. Utilization Certificate for Industries and Government Contribution
5. Statement of Expenditure

In order to keep the private organizations in biotech sector well informed about the SBIRI scheme like information or development about the scheme, discussion meetings, etc, the department is in the process of preparing general MAILING LIST and has called for private organizations engaged in modern biotech activities like research and development, production and commercialization, etc are to provide their contact details.
The above information may be sent through post addressed to The Executive Director, Biotech Consortium India Limited, 5^th floor Anuvrat Bhawan, 210 Deen Dayal Upadhyaya Marg, New Delhi-110 002 (E. mail: bcildelhi@vsnl.com Or bcil@biotech.co.in).
For further information click www.dbtindia.nic.in/sbiri.


Authored by Adithi Varna

Microsoft held liable for infringement and fined $290 million

A US Court of Appeals for the Federal Circuit upheld a jury decision stating that the Custom XML editor in Word infringes on a patent (US5,787,449) held by i4i, a Toronto based company. The Court further stated that Microsoft must pay $290 million and also granted an injunction, effective from January 11, 2010, whereby Microsoft must either stop selling Word or remove the infringing feature from Word.

The Court of Appeals said the injunction was necessary because mere monetary compensation was not sufficient to cover the damages caused to i4i. "Because most of i4i's products are based on the '449 patent, i4i's market share, revenues, and business strategy are similarly tied to the patented method," court documents state. "These same factors reveal that the infringing custom XML editor relates to only a small fraction of Microsoft's sizable business. The far greater importance of the patented method to i4i, combined with the demonstrated past effects of infringement on i4i, favors issuance of a permanent injunction."

This lawsuit was initiated by i4i; which sells custom XML add-ons to Microsoft Word; in March 2007. i4i stated that i4i had a relationship with Microsoft before the controversy began. i4i further stated that Microsoft worked with i4i and used its products, which are based on the patent in question, shows that Microsoft was aware of the patent and hence willfully infringed it. A jury decision held that Microsoft was infringing on the patent and awarded damages of $200 million, with the court adding a $40 million dollar fine on Microsoft.

Microsoft is planning to remove the infringing feature from Word by the date mentioned in the injunction. Also, Microsoft released a patch in October 2009 to remove this feature from Word.

Microsoft is also looking at appealing the decision to the US Supreme Court.

School of Management at IITB organizes a confluence with an aim to take IP research and education to the next level

Dr. Karuna and her team at the School of Management of IITB organized an IP Confluence on 21st and 22nd of December with an objective of taking IP education and research to the next level. Unlike most IP seminars and conferences, where experts speak on some basic concepts without a specific agenda, this conference had a clear agenda and focussed on a few advanced aspects of IP. Though the research paper presentations were based on preliminary research, scholars received critical feedback and inputs from different perspectives. As per the plan, a broad road map was prepared and presented at the end of the confluence. The confluence is overall a good start towards developing multi-disciplinary IP education and research in India.

Though the event was well-organized overall, there were a few lapses, which can largely be attributed to the attitude of policy makers and senior IP professionals. A few speakers did not stick to the topic given to them and delivered talks on their standard topic. Lot of time was spent by some speakers on very basic aspects, which were known to every one. Some speakers from the government were not well prepared and gave very vague information at instances.

Despite the few drifts, the confluence was overall well organized and I would like to congratulate Dr. Karuna and her team for the same. I will post a short note on the proceedings of the conference shortly.

Music Band Agreements

Some aspects to be considered while drafting a Band Agreement are- the nature of properties that may be accumulated by the Band, during its operation; the types of projects that may be undertaken by the Band; the sharing of incomes realized by the Band as a whole; and the conditions of disbandment or for departure of Band members.

A. The Band’s properties

While a Band may come to own several forms of properties over the years, the most valuable of these properties would be the intangible properties called, Intellectual Property Rights. A music Band may own and enjoy copyrighted works as well as trade mark rights to its name and service.

1. Copyrighted Works owned by the Band

The primary point to note is that copyrighted works may exist in various forms, which include:

• Musical composition;

• Lyrics of a song;

• Musical works, encompassing both the song lyrics and their corresponding compositions;

• Sound recordings, encompassing the recordings of the musical works;

• Original Music content provided by the Band on any Internet s

ite, including the Band’s blogs, website, social networking sites, etc.;

• Artworks created for or by the Band and as appearing on the Band’s albums, or on merchandise relating to the Band; and

• Personal news items, write ups, other such information which may be shared by the Band for commercial value (these include autobiographies, weddings pictures, etc.).

The next question that arises is, who owns the Works, including the music of the Band– The Band may have created (or in some cases, bought all rights to) several musical works/ compositions and/ or songs. Some of these may be still in music sheets and unrecorded. Also, the sheets/ songs may have been created/ developed by one Band member, or by two or more members or by the group as a whole (with all members contributing to its creation). Demarcating the contribution of each member and determining his/ her ownership to the final work needs a pre determined rationale. This may be done on a song by song basis, ranking each member’s input, or by simply using a pre agreed to figure for every song. Again, a pre agreed to figure could mean an equal portion for every member; or a division between the principal contributors of the work and the rest of the Band members.

Another factor to be determined is what happens if members leave the Band- would they lose all their rights to Band’s works, or does the Band allow them to retain some rights and claims? This should ideally relate back to the Rights and to the Termination provisions in the Band agreement which envisage post termination issues such as whether a member may perform or earn from music outside of the Band.

2. The Band name

Another important property of the band is its name, which, as a result of conscious efforts and expenditures over time may develop into a valuable brand. The Band Agreement should determine who owns the Band name and what proceeds may be attributed to the Band name. There should also be stipulations about the effects of disbandment and the resulting restrictions on the use of the Band’s name. For instance even after the departure of one member from a big sized group, the remainder of the Band may wish to continue using the same name or for reasons of displeasure or revenue, may choose to adopt an altogether new name. The latter case may save litigation costs with regard to the old Band name, it would, however, involve a whole new budget towards building familiarity amongst fans of the Band’s new name.

B. Earnings

Once there is a consensus as to the terms of ownership of the Band’s Works and Brand name, the next question that follows is who will take home the monies received by the band through live performances, through album and merchandise sales, through endorsements and all other forms of earnings. It is, thus essential that the Band take into consideration the various sources of receiving monies and the role play of the members in such earnings. Thereafter it needs to be determined what would be the share of each member from incomes such as royalties, merchandising, sponsorships, or endorsements. The Band members would also need to take into consideration the division of income in case one member leaves or in case the Band is altogether, dispersed and if there should be compensations to and buyout of departing member’s rights.

C. Departure of members and Disbandment

An Intraband contract cannot omit provisions for dispute resolution and conditions on which Band members may depart or on which the Band itself may cease to exist. It is on termination of existence that members will have to deal with the various issues so as to ensure peaceful exits and minimize dispute costs.

Indian Patent Infringement : Raj Prakash Vs.Mangat Ram Chowdhry - Case 4

This case involved a patent relating to a process for printing picture films for use in film-strip viewer and the films made by the process. The Appellant, patent holder, sued the Respondents, who were making and selling similar film strip viewers for patent infringement. The Court compared the product of the Respondents with the patent claims and held them liable for infringement because Respondents were also selling viewers with similar films as that of the patent holder. Though the Respondents made certain variations in their film viewers, the Court stated that such changes were unessential to the invention and the viewers of the patent holder and the Respondents were substantially the same. While concluding on infringement, the Court cited a case in which sale of Betacillin was held to infringe a patent on Ampicillin because they were medically equivalent.

Trade Secret Case Law Jurisprudence in India – 1

Trade Secret in India is not protected under any specific law but Indian Courts from time to time have recognized that confidential business information, such as customer lists, details of suppliers, pricing policies, product launch time-schedules, management marketing, know-how, designs, drawings, model, specifications, surface data, notes, improvements, technical information and so on may qualify as trade secrets.

The jurisprudence that has developed in relation to trade secrets and confidential information is by way of case laws. In light of this, following and successive posts will be devoted in bringing out the case law jurisprudence relating to trade secrets and confidential information in India so that the development of law in this regard may be understood.

John Richard Brady and Ors V. Chemical Process Equipments Pvt. Ltd. and Anr (1987) – Delhi High Court

The case in dispute involved plaintiff asking for the permanent injunction to restrain the defendant from infringing Copyright of the plaintiffs and from passing off the defendants' products made after acquiring the know how and confidential information of the plaintiff.

The facts of the case were such that the plaintiff had come up with the idea of growing fresh green grass as basic food for livestock in a compact unit capable of producing grass throughout the year irrespective of external climatic conditions. In light of this, he developed an original Fodder Production Unit (hereinafter called as “FPU”) in the year 1972 and decided to start a phased program to manufacture the FPU in India for both domestic and export sales, for which he sought quotations from the defendant for the supply of thermal panels manufactured by the defendant. To enable the Defendants to send their quotations, all the technical material, detailed know-how, drawings and specifications concerning the FPU were shared with the defendant under a confidentiality agreement, wherein defendants agreed that during the pendency of the agreement, defendant would not manufacture these panels for anybody else nor would be instrumental in divulging the details and the specifications furnished to them. However, later, on discovering the inability of the defendants to supply the required thermal panels, plaintiffs did not place any order to the defendants. It was alleged that in the mean while, defendant made a number of visits to the locations where the plaintiffs' FPU were in operation with a view to acquire the working know how and technology of the FPU. After sometime, the plaintiffs learnt that the defendants had come up with a machine, which looked like a false representation of the plaintiff’s FPU. Given the backdrop, plaintiff alleged that the defendant had committed breach of confidence by wrongfully converting and misappropriating know how, information, drawings, designs, and specifications of the plaintiff disclosed under the confidentiality agreement. It was also alleged by the plaintiff that the machine produced by the defendant was an inferior version of the plaintiffs' FPU, which caused immense damage to the plaintiffs' business and reputation. Further, he contended that the know-how, drawings and other technical documents like specifications were not a matter of public knowledge and were by their nature confidential and that the unauthorized use of the labour of plaintiff who prepared them provided a 'spring-board' to the defendant, by which defendant had obtained an unfair advantage over the plaintiffs’ work.

In light of the above, the defendant contended that they had neither infringed Copyright nor they are liable for breach of any of the terms of the agreement. They alleged that there are several other firms making such machines in the international market for a long time. The defendant denied that plaintiff had given them any drawings or technical material or know how concerning the FPU. They alleged that plaintiffs "supplied specifications only with regard to the thermal panel in order to enable the defendants to make quotations and also a tray to know the size of the thermal panels". They denied having committed any breach of confidence as alleged by the plaintiffs. It was alleged that the machine produced by the defendant was different from that of the plaintiffs in respect of several substantial functional features and pleaded that when a comparison is made of the production units in the international market, they would appear similar but there would be vast difference in the matter of technical and mechanical designs and process conditions and hence, they had not violated any of the rights of the plaintiffs .

Based on the allegations and contentions from both the parties, Court observed that machine of the two parties was strikingly similar. Further, the defendant also had the access to the drawings of the plaintiffs. Court also observed that the defendant had not shown how in fact they had arrived at their machine. In light of this observation, Court held that the plaintiff have made out a strong prima facie case of infringement of their copyright, and of strict confidentiality under which specifications, drawings and other technical information about the FPU were supplied to the defendants. Court clearly laid that it would be in the interest of justice to restrain the defendants from abusing the know-how, specifications, drawings and other technical information regarding the plaintiffs' FPU entrusted to them under the confidentiality agreement, which defendants had used as a 'spring-board' to jump into the business field to the detriment of the plaintiffs. And therefore, Court restrained the defendants from manufacturing and selling machines that were substantial imitation and reproduction of the drawings of the plaintiffs' FPU or from using in any other manner whatsoever the know-how, specifications, drawings and other technical information about the FPU disclosed to them by the plaintiff.

The analysis of the above case helps us in understanding that drawings, specifications, technical information and so on has been considered as trade secret and confidential information by the Indian Courts. Further, importance of confidential agreement has also been clearly laid in this case.

A cure for Patent Professionals addicted to the stock ticker!

A cure for patent professionals addicted to the stock ticker is to be launched early 2010. A financial exchange to trade in patent licensing rights, based in Chicago, is to be launched. Owners will be able to rent their licensing rights through the exchange. The exchange will promote the patent and sell licensing rights for the patents in single units (similar to stocks), in return for a percentage of the licensing fees.

As always for any proposed idea, there are both proponents and opponents to the exchange. The proponents suggest that the exchange will offer a transparent pricing structure for licensing patents. The opponents are wary of the exchange aggregating a large number of patents and becoming lawsuit-happy.

The interesting aspect of this will be in seeing how the exchange values a patent. Also,if the exchange can attract the leaders in patenting (the large corporations) to offer their patents on the exchange.

Trademark (Amendment) Bill 2009- Lok Sabha approves Madrid Protocol among other changes.

December 18, 2009 witnessed the Lok Sabha approving the Trademark (Amendment) Bill, 2009. With this approval the Madrid Protocol crossed the first hurdle towards being implemented in India. The Madrid Protocol facilitates a cost effective regime of international trademark registration wherein nationals of member countries can receive trademark protection in other member countries. The Protocol also prescribes a time limit of 18 months for grant of a trademark from the time of filing.

As per a report by The Hindu the bill seeks to insert Chapter IV A in the Trademark Act which will give the Registrar of Trademarks power to deal with the international trademark applications under the Madrid Protocol The Chapter will cover both applications originating from India as well as applications received from the International Bureau.

Interesting patent pending invention

Most technology and engineering companies perceive development of a good portfolio of patents as a key function that enables them to differentiate themselves from their competition, and maintain strategic advantage in their business. Companies adopt various patent generation, protection and management strategies to develop a portfolio of patents. Strategies used by companies for generation of IP include, identifying inventions generated within the company, tying up with universities to generate IP, and acquiring third party IP.

Acquiring third party IP can benefit the company if the company successfully identifies good inventions generated by third party, such as independent inventors, and acquires the same before the invention gets limelight.

I recently came across one such patent pending invention by an independent inventor, which in my opinion would be of interest to two wheeled vehicle manufacturers. The complete patent specification is provided below:

Patent Application

The invention relates to two-wheeled vehicle stand. More particularly to center/main stand of two wheeled vehicles. The center stands which are currently used are configured to pivot between operating and non-operating positions. In the operating position, the stand supports the vehicle. However, it has been observed that the stands that are currently used have some drawbacks, such as, an unintended push to the vehicles results in retraction of stand into non-operating position, thereby rendering the vehicle to fall, further, parking the vehicle on steep surface is always a problem because the stands have been observed to retract into non-operating position when parked on steep surfaces, additionally, the user has no control on the position of the bike stand when he is not near the bike. Such drawbacks are addressed by the aforementioned patent pending invention.

The stand disclosed in the patent pending invention includes a holder mounted on the stand and a piston configured to being released into a locking position and retracted into an unlocking position. The piston is released into the locking position to engage with the holder, thereby restricting retraction of the stand from the operating position and locking the stand; and when the piston is retracted into the unlocking position, the piston enables retraction of the stand from the operating position, thereby unlocking the stand. The piston is operated by a solenoid to which electricity may be supplied by the vehicle’s existing battery. The piston is retracted into the unlocking position when the solenoid is supplied with electricity, and is released into the locking position when supply of electricity to the solenoid is stopped.

The patent pending invention provides advantageous features as mentioned below:

• The stand may be allowed to retract by turning on the ignition key, and the stand may be locked in operating position by turning off the ignition key
• This invention provides additional theft protection because, the vehicle cannot be moved unless the main stand is retracted, and the main stand cannot be retracted unless the ignition is turned on
• The user is in full control on the position of the stand even when he is not near the vehicle
• The invention enables the stand to be in operating position even when the vehicle is rigorously pushed

Case Note: Aktiengesellschaft Vormals Meister Lucius & Bruning a Corporation etc.Vs Unichem Laboratories - Indian Patent Infringement Case 3

The case related to a patent in respect of the manufacture of new sulphonyl-ureas, salts of those compounds and of anti-diabetic preparation containing such compounds. One of the chemical compounds comprised in the said patent was Tolbutamide, and since 1957 the patent holder had been marketing the same as an anti-diabetic drug in India and all over the world under the trade mark "Rastinon". The patent holder filed an infringement suit against the Respondents claiming that the manufacture, preparation and sale of Uni-Tolbid tablets or Tolbutamide by the Respondents infringes its patent. In response to the suit, the Respondents claimed that their activities were based on a patent held by one of the Respondents for the preparation of substituted benzonesulphonyl ureas from the corresponding substituted benzonesulphonylthioureas by desulphurisation with hydrogen peroxide and therefore, they were not liable for infringement.


The Court construed the claims before deciding on infringement. Claim 1 of the patent read as follows:


“A process for the manufacture of sulphonylureas of the general formula R-SO. 2-NH-CO-NH-R. 1 in which R represents a phenyl radical which may contain one or two substitutes selected from alkyl and alkoxy residues, the alkyl group of which containing at most 8 Carbon atoms, and halogen atoms, or represents an aliphatic or cycloaliphatic Hydro-Carbon radical containing 3 to 8 Carbon atoms and R. 1 represents an aliphatic or cycloaliphatic Hydra-Carbon radical containing 2 to 8 Carbon atoms, and of the salts thereof, where in compounds of the formula R - SO. 2.-X and Y-R.1 are reacted together in which X and Y are groups which ion reaction together form a urea linkage as defined above or a linkage readily convertible thereto".
Furthermore, Claim 11 of the patent read as follows:


“A process as claimed in claim 1 wherein thioureas of the formula R-SO. 2-NH-CS-NH-R. 1 are treated with agents eliminating the sulphur, R and R. 1 having the meanings given above."


The Court stated that Claim No.1 was the main claim of the patent, which covers compounds obtained by the chemical reaction specified in it, either directly to form a urea linkage, or indirectly to form a linkage readily convertible into urea linkage. As per the Court, Claim No.11 falls within the scope of claim No.1 in so far as it deals with the processes by which thioureas were converted to the corresponding urea linkage by being treated with agents eliminating sulphur and the radicals R and R.1 had for the purpose of claim No.11 the same limitations in regard to the number of Carbon atoms as they were required to have for the purposes of claim No.1.


As the Respondents were preparing the compound Tolbutamide by the process of desulphurisation of benzene-sulphonyl thioureas with Hydrogen peroxide, the Court stated that such a process falls within the scope of claim 11 because the claim includes desulphurisation of thioureas by any chemical substance, including Hydrogen peroxide, which was used by the Respondents. The Court stated that Claim No. 11 was wide enough to cover all methods of eliminating sulphur from thioureas, whether the desulphurisation was effected,, by means of Hydrogen peroxide, or by the use of any other substance. As claim 11 depended on claim 1, the court held that claim 1 was also infringed by the Respondents’ process. Though one of the Respondents held a patent for the preparation of substituted benzonesulphonyl ureas from the corresponding substituted benzonesulphonylthioureas by desulphurisation with hydrogen peroxide, the Court stated that holding a patent over a step in the process would not avoid liability for patent infringement if the process falls within the scope of a patent claim.

Design Application Statistics

The table below gives details of design applications filed and registered during the period 2003-2008.  

YEAR	Filed	Registered
2003-2004	3357	2547
2004-2005	4017	3728
2005-2006	4949	4175
2006-2007	5521	4250
2007-2008	6402	4928

Contributed by Kumar Anjani

Indian Patent Infringement: Laxmi Dutt Roop Chand Vs. Nankau - Case 2

In this case, the Appellant, Laxmi Dutt Roop Chand, was the patent holder of a patent relating to the process of manufacture of hollow wares, such as 'lotas', 'batwas', 'degchis', 'batlois' and so on. The Appellant filed a patent infringement suit against the Respondents, Nankau and others, claiming that their process of manufacturing hollow wares violates the patents held by the Appellant and prayed for a permanent injunction restraining the Respondents from manufacturing the hollow wares using the process. In response to the infringement suit of the Appellants, the Respondents claimed non-infringement and counter-claimed for revocation of the patent.
The Court compared the claims of the patent with the process being used by the Respondents and held that the Respondents were not liable for patent infringement because their process does not fall within the scope of patent claims. The Court differentiated the process of the Respondents from that claimed in the Appellant’s patent in the following manner:
a. The 'darja' of the Appellant used in the process was almost square and had two lateral sides and the side of the ramming hole was almost equal; but the side of the pouring basin was not flat. On the other hand, the darjas which were seized from the Respondents’ place had a straight base in which the two lateral sides did not exist, but only a semicircular frame with pouring basin existed;
b. The system of clamping the two parts In the Respondents’ darja was absolutely different from that of the Appellant’s darja. While the Appellant’s darja had guide pins and sockets, such pins and sockets were absent in the Respondents’ darja. The Respondent’s clamps were also of a different type from that of the Appellant;
c. While the right and left sides of the two halves of the mould box had iron boards in the Appellant’s darja, the Respondents were using wooden planks which were fixed to the iron darja by nuts and bolts;
d. The Appellant had a core attached to the core supporting plate; but the core (which had been described in the Appellant’s evidence as a neel (mathani) was totally missing in the Respondents darja;
e. Though the initial process demonstrated by the Respondents in Court for filling sand in the darja was almost identical with the process of the Appellant, yet there being no core or mathani in the Respondents' darja the subsequent process given in the description for fixing the core with the supporting plate inside the mould was totally missing from the Respondents' mould box;
f. According to the patented process the making of the central core with the aid of core supporting plate was an essential ingredient in the Appellant's process; but there was nothing like it in the process demonstrated by the Respondents with the aid of the mould box; and
g. In the process adopted by the Respondents for manufacture of hollow-wares a solid sand model of the inner side of the hollow was formed in the Respondents' process while in the Appellant's patented process there was core embedded inside.
Based on the comparison and evidence submitted, the Court held that the process of the Respondents had different steps from that of the Appellant and therefore was not infringing.

Indian Patent Infringement : Lallubhai Chakubhai Jariwala Vs.Chimanlal Chunilal -Case 1

In a case involving a patent relating to a process of treating dry fruits, the patent holder filed a suit against an alleged infringer stating that his process of treating dry fruits amounts to patent infringement. The Court in the case compared the patented process and the alleged infringer’s process and held that there was no infringement because a substantial step in the patented process was not present in the alleged infringer’s process. It stated that though the steps of

• using a hot solution of washing soda instead of sulphuric acid in the patent, which had similar effect of cleaning or removing the dirt from the goods;
• using 4 and 2 percent of bleaching solution instead of 3 percent used by the patent holder; and
• using muriatic acid instead of acetic acid used by the patent holder

were equivalent, the alleged infringer’s process would not amount to infringement because the alleged infringer’s process used sulphur dioxide fumes without pressure, which was an essential step in the patent holder’s process. As the alleged infringer’s process had a step that was different from that of the patent holder’s process, the court held that the alleged infringer was not liable for infringement.

Complaint against Open Source License non-compliance

As I had been mentioning in my earlier posts, enforcement of open source licenses is on the rise. Users and distributors of open source softwares that do not comply with licenses can no longer get away due to oversight or lack of commitment to enforce. Many lawyers have been coming forward to work with developers of open source software for enforcing their rights under the licenses. One of such firms that has been formed to help enforcement of open source licenses is SFLC.

SFLC has recently filed a complaint against companies like Samsung, Best Buy, Westinghouse and so on for violation of terms and conditions of General Public License (GPL) Version 2. The complaint claims that the companies are distributing products containing the software, BusyBox, which is governed by GPL Version 2 but are not complying with the condition relating to source code distribution in the license. The complaint has been filed in a New York District Court after failed efforts towards convincing the companies to comply.

Considering the aggression among open source communities to spread the open source movement, it will not be too long before licenses are enforced against software companies in India also. Today, most companies are incorporating clauses that put the burden of open source license compliance and related liability to indemnify on services companies. Though the objective of open source communities is primarily to enforce their licenses, claims for huge damages are not out of question. In such a scenario, companies must review open source license terms and take necessary steps to avoid losses due to non-compliance.

Indian Trademark Statistics (2006 to 2008)

The tables provided hereunder mention the statistics with regard to the number of applications at various stages of prosecution, types of trademarks filed, class wise trademark filings.

As it can be seen from Table 1, the number of Trademark filings at the Indian trademark registry has increased.

As is evident from Table 2, the maximum numbers of trademarks which are filed for protection are “word marks” followed closely by device marks.

As is evident from Table 3, the maximum number of trademark applications is filed under class 5 followed by class 42. (Indian trademark classification)

Table 1- Statistics of Trademark application providing the number of applications at different stages of prosecution for the period 2006-2008.

Year	Applications filed For Registration	Number of Application advertised in the Trade Marks Journal	No. of marks in respect of which registration was renewed	Number of trade marks registered
2006-07	1,03,419	1,04,260	15,969	1,09,361
2007-08	1,23,514	1,02,777	20,174	1,00,857

Table 2- Statistics of application filed for different Types of trademarks from the year 2006-2008.

Types of Marks	2006 - 2007	2007 - 2008
Word Marks	67,633	71,202
Device Marks	35,631	52,256
Number Marks	79	20
Letter Marks	74	36
Letter And Numeral	2	----
Total	1,03,419	1,23,514

TABLE 3- Statistics showing class-wise distribution of applications for trade marks from financial year 2007 to 2008.

Class	GOODS	Number of applications Filed	Percentage of total filing
1.	Chemical products used in industry, science, photography, agriculture, horticulture, forestry, manures etc.	1932	1.56
2.	Paints and Varnishes	1014	0.82
3.	Perfumery, cosmetics etc.	4063	3.29
4.	Industrial Oil and Greases (Other than edible Oil) etc	734	0.59
5.	Medicinal, Pharmaceuticals, Veterinary and Sanitary substances etc	19116	15.48
6.	Un-Wrought and partly-wrought common metal and their alloys etc	2050	1.66
7.	Machines and Mechanic Tools, Motors, etc.	3423	2.77
8.	Hand Tools and Instruments etc.	664	0.54
9.	Scientific, Nautical, Surveying and Electrical apparatus etc.	7425	6.01
10.	Surgical, Medical, Dental And Veterinary Instruments, apparatus	1226	0.99
11.	Installation for Lighting, Heating etc.	2848	2.31
12.	Vehicles and their parts, apparatus, Locomotion by land, air & water	2269	1.84
13.	Fire arms, ammunition and projectiles, etc. 222 0.18 14	222	0.18
14.	Precious metals and their alloys, etc.	1585	1.28
15.	Musical instruments (other than talking machines and wireless apparatus)	275	0.22
16.	Paper and Paper Articles, Stationery, Printed Matters etc	4869	3.94
17.	Gutta Percha, India Rubber etc.	1303	1.05
18.	Leather and Imitation of Leather etc	950	0.77
19.	Building Materials etc.	2127	1.72
20.	Furniture, Mirrors etc.	1281	1.04
21.	Small Domestic Utensils etc.	1258	1.02
22.	Ropes, Strings etc.	394	0.32
23.	Yarns and threads	439	0.36
24.	Tissues (Piece goods) etc	1936	1.57
25.	Clothing including Boots, Shoes and Slippers	5840	4.73
26.	Laces and embroidery, Ribbons and braids etc	514	0.42
27	Carpets, rugs, mats etc.	407	0.32
28.	Games and Playthings etc.	890	0.72
29.	Meat, Fish, Poultry etc	2388	1.93
30.	Coffee, Tea, Cocoa etc.	5878	4.76
31.	Agricultural, Horticultural and Forestry Products and Grains not included in other classes	2009	1.63
32.	Beer, Ale and Port, Mineral and Aerated Waters and Other Non-Alcoholic drinks not included in other Classes	2113	1.71
33.	Wines, Spirits and Liqueurs	1098	0.89
34.	Tobacco, Raw or Manufactured, Smokers Articles, Matches	1610	1.30
35.	Advertising, business management, business administration, office functions	6638	5.37
36.	Insurance, financial affairs; monetary affairs, real estate affairs	2981	2.41
37.	Building construction; repairs; installation services	2547	2.06
38.	Telecommunications	2039	1.65
39.	Transport, packaging and storage of goods; travel arrangement	1665	1.35
40.	Treatment of materials	557	0.45
41.	Education; providing of training, entertainment; sporting and cultural activities	6062	4.90
42.	Providing of foods and drink; temporary accommodation, medical, hygienic and beauty care; veterinary and agricultural services; legal services; scientific and industrial research, computer programming; services that cannot be classified in other classes	8637	6.99
	Multiple classes	6238	5.05
	Total	123514

Source – IP India website

Contributed by Kumar Anjani