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The Supreme Court, on Friday, dismissed the special leave petition (SPL) by Roche, challenging the division bench order of the Delhi High Court. The division bench had earlier in April 2009, upheld the order refusing the injunction which issued by a single judge of the Delhi High court, and even awarded costs for suppression of facts in a poorly reasoned judgment.

Noting that it was already 4 months since the division bench order of April and the final hearing on merit of the infringement case (Roche vs Cipla) has already commenced at the Delhi High court, the Supreme Court dismissed the petition and ordered that the ongoing trial at the Delhi High Court be expedited. The SC further went on to note that nothing in the Delhi division bench order would bind the trial court judge.

Read the mint report on this matter here and the analysis by Shamnad in his blog Spicyip here. Spicyip has been covering this matter for a while now read here.

Novartis has filed an appeal at the Supreme Court (India’s Highest Court) challenging the refusal of its patent application for its blood cancer drug Glivec by the Intellectual Property Appellate Board (IPAB- India’s IP tribunal).

The IPAB in its decision in July had rejected Novartis’s appeal against refusal of its Patent Application for its drug Glivec by the Indian Patent Office (Chennai) back in January 2006 on grounds that the application was not patentable under Section 3(b) (Public order, since the drug was high priced) and 3(d) (failing to give a significantly enhanced efficacy) of the Indian Patent Act.

Read more on Mint, Hindu, Times of India reports on this. SpicyIP has been covering this matter from day one, read them here

In the case of Versata Software Inc. v. SAP America Inc., the  U.S. District Court (Eastern District of Texas (Marshall)) has found SAP guilty and ordered a payments of $138.6 million to the respondent for violation of its  patent rights. Versata Software claimed that SAP wrongfully used technology covered by a patent relating to the way items are priced and systems configured for products with multiple levels. According to Bloomberg  reprots this is 4th highest in US and the 11 highest overall damages awarded in a Patent litigation this year.

Read Bloomberg, IndiaTimes or PCWorld reports for more details

In a decision dated 11th August, WIPO Domain Dispute Arbitrator Pavan Duggal had ordered the transfer of the domain http://www.oktatabyebye.com (disputed domain) to Tata Sons (Complaint) from makemytrip.com(mmt) (Respondent), the travel & ticketing company, who hosted a online travel community allowing users to share their travel experience on the contested domain. Though the respondent (mmt) had argued that the common parlance “OK Ta Ta Bye Bye” was used as a farewell and that the disputed domain was not used in bad faith for deriving illegal benefits from the name TATA, the arbitrator ruled that the domain was confusingly similar to the mark ‘Tata’ and the respondent had no legitimate right to use the name. Moreover the Arbitrator had noted bad faith on the part of the respondent since the advertisement and offers on the home page of the disputed domain was from makemytrip.com, therefore the purpose of utilizing the domain name <oktatabyebye.com> appeared purely to funnel Internet traffic and thereby bring it to the website “www.makemytrip.com” for commercial gain.

This decision seems harsh, particularly since the domain was based on the colloquial context for the application of the term ‘Tata’ to mean farewell, neither was there  bad faith on part of the respondent towards misguiding the public.  Last heard the respondent had intended to appeal against transfer of the domain at the Indian Courts.

Read the press reports Medianama (here) and Business Standard (here) for more on this topic and the report by Indiatimes (here) on why Cybersquatters eye online travel market.

Another interesting fact tweeted by Cleartrip is that <makemytrip.com> has also cybersquatted on the domain <clearmytrip.net.in> (see here), now that’s called bad faith registration.

This 26th day of August in IP History

In all started with second session the Patent Co-Operation Treaty (PCT) Working Group meeting the in May this year (Read all the reports here) where PCT reform was mooted. The aim of the reform was to provide a more effective PCT system which avoids the need for duplication of work. In spirit, this reform mooted by the PCT is the need for the hour. With increasing backlog in the national patent offices and inadequate resources leading to delayed grants which has a negative impact on technology and the economy, such a reform should be blessing.

As per the proposed reform, (as per PCT/WG/2/11 )

  1. More than one Authority (say A & B) reviews the Patent Application and gives a comprehensive search report.

  2. Another authority (say C) now Performs combined international/national examination using: their own search results; search reports from the previous authority A & B;

  3. Authority C now acts like a Examination body receiving response from applicant.

  4. Authority C also allows for and prior art submissions by 3rd parties before issuing patentability report.

  5. If the report is positive then it automatically qualifies for a patent in the member country, unless the member country issues a notice of refusal.

Though all the member nations acknowledged the need for a stronger PCT to reduce duplication of work, there was no consensus on the proposal and it has been decided to further discuss on the proposal. However certain sections of the community have already started crying foul even before the reforms could take any shape. The generic Indian Companies in particular are up in arms against any such idea being mooted.

One such editorial on Economic Times can be read here and subsequent analysis of the editorial by SpicyIP can also be read here. The most recent article on Economic Times comes from the Dr.Y.K.Hamied, Chairman & MD, Cipla Ltd (here) warns the Indian Govt not succumb to the WIPO pressure (Looks more like Cipla pressurizing the government)


Basically the Indian Generic community has two major issues.


Afraid of possible amendment to the Patentability, especially Section 3(d)

Their first concern is that the PCT reforms would force India to accept the examination made by other Authority other than India and thus limiting the freedom of India to apply substantive conditions of patentability. Generic Pharma companies worry that this would force India to grant patents for incremental inventions which otherwise was not be possible under section 3 (d) of the Indian Patent Act. The generic industries which survive by manufacturing such drugs would be the most affected by this.

However this issue was addressed by WIPO in their summary of the Chair (PCT/WG/2/13) para 5 which reads

The Meeting agreed that the relevant PCT bodies should continue their work to improve the PCT. The Meeting agreed that the PCT system can and should function more effectively, within the existing legal framework of the Treaty provisions

– to deliver results which meet the needs of applicants, Offices and third parties in all Contracting States;

– without limiting the freedom of Contracting States to prescribe, interpret and apply substantive conditions of patentability and without seeking substantive patent law harmonization or harmonization of national search and examination procedures.”

Further WIPO itself has condemned a news report in pharmabiz which made its stand clear stating

there is not – and never has been – any consideration at WIPO of what your article describes as a “global patenting system” which would “dilute the sovereignty of developing nations in determining patentability of applications for inventions and do away with flexibilities granted under the TRIPS Agreement”

More on the PharmaBiz report and WIPO’s clarification can be read from SpicyIP here.


Afraid of possible amendment to the Patent process, especially Pre-grant opposition proceedings

India is one of the very few counties who have two opposition proceeding. India Patent Act allows for a full fledged pre-grant opposition proceeding, including bi party hearing before the Controller. This has been used, rather abused, by the generic companies to the maximum extent for successfully delaying the grant of Patent. The proposed reform to PCT procedure takes into account the majority of member countries (as they have a single opposition (Post Grant)) and provides for 3rd parties observation.

The report adopted by the working group (PCT/WG/2/14) in its para 58 would clarify the PCT stand on this matter

In response to a query by one delegation as to whether it was intended that International Authorities be required to respond to third party observations, the Secretariat stated that, while the details of any system allowing for the submission of third party observations were still to be discussed, there had been no intention that such responses be mandatory. In this context, several delegations stated that more discussions were needed on the possible details of such system, including whether the applicant should be entitled to comment on any such third party observations and the possible need for translations of such observations. One delegation stated that it wished to reserve its position on the proposal to set up a system allowing for the submission of third party observations, noting the possible impact on the pre-grant opposition system existing under its national law.

It is rather obvious which was the delegation (Indian) who had reserved its comments noting the pre-grant opposition under its laws. Though one may not be a big fan of Section 3(d) or the existing pre-grant opposition proceedings, we believe WIPO would not be a forum to sort out national issues therefore let us have some faith on the Indian Delegation to come up with the best for the country position.

So Generic companies stop complaining and start inventing!


Patently Yours

This 25th day of August in IP History

  • In 1840, a patent for seeding machine was granted to Joseph Gibbons (US patent no 1,731).. later a patent of addition ( AI43 ) was filed to this patent.

The European Commission’s Directorate-General for Internal Market and Services has commissioned two independent studies, one on the comprehensive study on the quality of the patent system in Europe and other on the overall functioning of the trademark system in Europe.

On the Patent tender (Available here), the aim is to study the quality of patent rights with economic analysis in order to propose effective policy solutions for the optimal functioning of the future patent system in Europe considering its objectives to encourage innovation and the diffusion of new technology and knowledge.

This should take into account a system with the co-existence of national and European patents, and a future Community patent which is currently being negotiated between Member States. (Yes these guys seem to be serious about the community Patent system!)

On the trademark tender (Availble Here), the aim is to assess the current state of play of the Community trademark system and the potential for improvement and future development. As the Community trademark system is closely linked to national trademark systems, the study shall also evaluate national systems and, in particular, the relation and interaction between the 2 systems, including the need for further harmonization. The results shall, in particular, serve as basis for future review of the trademark system as a whole and enhanced cooperation between the Office for Harmonization on the Internal Market (OHIM) and the national trademark offices of Member States.

More on this can be read at IPkat (here) and Out-law (here).

We in India would really love to see such study happening here. However, what is more interesting is that EU has made an open tender to any 3rd party to undertake such a study which would end up making policy changes in EU. Such move in India to conduct study by a 3rd party would be strongly opposed. Any such study in India is either performed by the government themselves or by a technical committee appointed by the Government.

We have seen of what had happened to the Mashelkar Committee report (read here from shamnad’s blog spicyip) which has been plagued by number of accusations on numerous occasions, fist accused of plagiarism and now for misquoting. If only such study was conducted by a 3rd party, they would be a on the receiving end of extreme lobbing by all interested parties to cater to their interests. Even when the report of the study is  finally out, it would be accused by the some parties for being partial to certain view, ending up at the Indian courts.

This makes me wonder if any other countries have such issues, would love to hear from the readers.

Patently Yours


This 24th day of August in IP History

  • In 1891, Thomas Edison applied for a movie camera patent … but the film used to record the movies was patented only 6 years later.

  • In 1869, the first U.S. patent for a waffle iron was issued to Cornelius Swarthout ( Patent No 94,043)

World Intellectual Property Organization (WIPO) provides a free online course twice a year on general concepts of IPR. This is a very good course for  for anyone who wants to know more about IPR and a must have for people working in IP field or looking to get into it.

This course covers the main areas of intellectual property, namely copyright, related rights, patents, trademarks, geographical indications, industrial design, plant breeders’ rights, unfair competition and international registration systems.

General Course on Intellectual Property (DL101) as it is called is a fully online course and has twelve modules which can be read online or even downloaded to read offline at your convenience.

  1. Guide to Studying the Course

  2. Introduction to IP

  3. Copyright

  4. Related Rights

  5. Trademarks

  6. Geographical Indications

  7. Industrial Design

  8. Patents

  9. WIPO Treaties

  10. Unfair Competition

  11. Protection of New Varieties of Plants

  12. Summary and Discussion on IP Rights

Registration for the 2nd session of 2009 are now open and open till the September 20, 2009.

The 50 hour course can be completed anytime between October 1 and 15th November 15 and is followed by an exam. This exam is an 2 hour online open book test with 40 multiple choice questions, and this test can be taken anytime between November 16 to 18. A beautiful certificate from WIPO Academy would be given to all successful candidates who pass the test.

To register for the course follow the steps.

  1. Go to http://academy.wipo.int during registration period;

  2. Select English;

  3. Click on “Enroll now” on the right of the DL101 course description;

  4. Click in the box next to course code which you wish to enroll for and click on “Enroll now” in the bottom of the page;

  5. Click on “Confirm”;

  6. Click on “Register now”

  7. Fill in the registration form with your personal information; provide correct details as the Certificate will be in that name and be sent to the address provided.

  8. Click on “Next” at the bottom of the page; it will tell about payment option, ignore it, those are for paid courses only.

  9. Wait for the email confirming your registration.

You will be informed about when the course starts by your email. I will follow up with a post before start of the course about how to log on and start your studies.

So happy registering and studying.

Patently Yours