Op EdsOP. ED.

The influx of AI in various businesses intricate has forced the companies to rethink the base of a business and change its attitude towards more prospective business strategy including innovation from AI. The bigger issue comes up when AI itself becomes the inventor or author. This write-up will aim to delve around the bigger issue of whether an AI could be ascribed as an inventor in the light of the Dabus case and how this case was a missed chance to develop a jurisprudence of this contentious issue.

The case of Stephen L Thaler v. Comptroller General of Patents, Design and Trade Mark[1]  is the latest celebrated case of  United Kingdom (‘UK’). It starts from two patent applications, GB1816909.4 and GB1818161.0, respectively filed by Thaler in his name, in the United Kingdom Intellectual Property Office (‘IPO’) for the grant of patents. The application specifies that Thaler was not an inventor, which is possible as Section 30[2]  of the Patents Act, 1977 (‘the Act’) states that the right to apply for a patent is transferable. IPO subsequently notified Thaler to file the statement of inventor-ship and the right to grant patents pursuant to Section 13 of the Act which was Patent Form 7[3]. Thaler filed  Patent Form 7 where he stated that the inventor is none other than an AI named Device for the Autonomous Bootstrapping of Unified Sentience (‘DABUS’) and since he is the owner of the AI is entitled to obtain the right to grant of the patents. To put it simply, Dabus is the inventor, and Dabus is owned by Thaler. Due to this ownership of Dabus by Thaler, Dabus has transferred the right to grant patents to Thaler. So inherently, the contention assumes that  Dabus is entitled to have patents and hence, it can transfer it to its owner, Thaler. This inherent assumption put in the case has caused the conundrum that whether an AI can be granted a patent, leave alone transferring it. The decision of IPO was negative, which was appealed to the High Court of England and Wales, Special Patents Court which upheld the IPO’s decision.

A similar matter was also been raised in the European Patent Office as well as the United States Patent and Trademark Office but it received the same fate. For our discussion, the author will be restricted to the decision of the Special Patents Court of the High Court of England and Wales and will analyse the situation in the light of the reasoning given by the High Court.

The author tried to delve into various legislations and ended up getting only one provision that does not directly specify but tries to fill some gap with regards to computer-generated work specifically dealing with copyright. Section 9 Para 3[4]  of the UK Copyright, Design and Patents Act, 1988 specifies that any artistic, literally, dramatic or musical work that being computer-generated; the author will be the one who undertakes all the necessary arrangements. But it doesn’t answer our tryst for patents and inventions. The United States (‘US’) doesn’t leave any scope. Section 306[5]  of the Compendium of the US Copyright Office states clearly that registration of authorship will only be done, provided that the work was created by a human being, giving no scope to AI made expressions leave alone for copyrights. The US Patents Law narrows down the term inventor to ‘individual’ or in case of the joint invention, ‘individuals’. Hence, by using the term ‘individual’, the US does not leave any scope for corporations too.

Before getting on to analyse this case let us make ourselves very clear with two sections of the UK Patents Act, 1977 around which the whole case revolves. Section 7[6]  of the Act provides the right to apply for and grant patents whereby any person may make an application for patents and the inventor can be granted the patents. Section 7(2) states that any person associated with the application through any conventions or any rule of law or any successor is entitled to be granted the patents. Section 7(3) states that the ‘inventor’ concerning the invention is the actual devisor of the invention. Whereas, Section 13[7]  talks about the right of an inventor to be mentioned in the invention. The court analysed each of the sections before arriving at a judgment.

A. Was the Court’s decision appropriate?

The IPO as well the Special Patents Court relied on similar reasoning to reach an agreement. Dabus is not a legal person and being a machine it cannot hold patents for the Act. To critically analyse the court’s decision, we split this into two parts. First, did the court explain the nature of ‘inventor’? Yes, the court did try to answer who the inventor is. But the answer seems to be very simplistic. The Court continuously relied upon the fact that Dabus cannot be granted the patent because it is not the ‘person’ without getting into the literal interpretation of what ‘person’ can constitute. Defining the limit of ‘person’ is something that seems to be left unaddressed.  A person is natural as well as a legal person. Corporations forms as a part of a legal person.  Through the judgment the Court made itself very clear that the inventor cannot be any other than a person, therefore avoiding getting outside the bandwidth of the statutory scheme of the Act. One reason why it can be said to be a missed chance is because of their prior assumption of a person being a human and therefore, avoiding stretching the constitution of the term inventor.

Secondly, did the court try explaining the subject-matter? The author feels that the court failed to address such a contentious issue holistically. What the court did is to revolve around the term ‘inventor’ linking it to ‘person’ keeping prior presumption of a person being a human. Trying to solve this conundrum has left the larger picture being unaddressed about the fate of future cases with this subject-matter. The court very clearly stated that it can only construe legislation and cannot legislate agreeing to the point that this is a policy issue that requires deliberations. It is a matter of how should be and not how the law is. But the court has the power to interpret the law. Only humans can be persons are something which can be treated as a narrow definition being taken by the court.  If a legal person can be construed as a corporation, how minimal a chance can be that an AI could also be a person? The second reason why it can be said to be a missed chance is because of this narrowed interpretation and a missed chance to dictate the jurisprudence that could govern the AI-related inventions in the world.

B. Was the reasoning of the court in consonance with that of the existing legislation?

Sections 7 and 13 of the Act play a major role in this case. Thaler contended that his arguments are based upon Section 13 of the Act and not on Section 7, whereas, the court decided to read Section 13 with Section 7. Section 7 talks about the right to apply for a patent where under Clause 1 the term used is the person. On the other hand, the term used in Clause 2 is ‘inventor’. Clause 3 specifies that the inventor is the actual devisor of patents. Now, Section 13 talks about mentioning the inventor. Primarily, there has been no explicit ‘prohibition’ for granting a patent to AI. Sticking to Section 13 will make the job easier as it speaks of mentioning the inventor which Thaler did by mentioning Dabus. But, the court reiterated the reasoning observed in  Yeda research and development Company Ltd. v. Rhone-Poulenc Rorer International Holding[8]  that Section 7 contains an exhaustive code to determine who is entitled to grant the patents. The author feels that the reasoning being relied upon is wrongly represented. If an inventor used Section 13 as a part of the arguments advanced, there seems no reason to exclude the invention of an AI. Section 13 simply talks about the mentioning of the inventor which Thaler did by mentioning Dabus. The author is of the view that reading Section 13 with Section 7 is being purely misconceived and was unnecessary in the present case. Thaler’s contention being only subject to Section 13 was enough to prove that an AI can be mentioned as an inventor. Section 7(3) specifies that the inventor is one who is the actual devisor of the invention. Let’s suppose, if we read Section 13 with Section 7(3), even then also Dabus is being qualified for being the inventor. The main problem lies with the word ‘person’ being used in Section 7(1), hence either increase the threshold of who the ‘persons’ can be, or it’s better to not read Section 7 as Section 13 is sufficient to prove.

The author feels that, if for the subject-matter, Section 13 sufficiently answers, then it is highly imperative not to link with other sections for the sake of bringing more clarity.

C. Was the Court successful in providing for any policy implications?

The rejection of granting of the patent to Dabus can have large policy implications for the whole world. Not granting the patents sparks a new debate as to who will be the owner of the AI inventions. Well as the author already pointed out, this case was a missed chance to formulate a policy that could at least bring some clarity for the inventions. The author respects the court’s decision and the limitation being propounded by having a separation of power. But the author feels that the court could, at least, have framed some guidelines which can specify the future of such cases. To dismiss the case giving a simple reason, that it being a larger policy issue, cannot be a sufficient answer. One cannot deny the fact that these cases will not come up. The author will reiterate two reasons that will substantiate the lack of policy implication and therefore, it is a missed chance. Firstly, one is not able to effectively interpret what can ‘person’ constitutes. And secondly, not able to effectively deal with the primary subject-matter that who will be the owner of AI-related inventions? Instead, the court relied upon that AI cannot be granted patent since they are not a person and left the question of who should be the owner of AI inventions to a larger policy issue.

Dabus’ case will prove to be the future of AI inventions. In this era of technological interventions, it is very hard to assume the extent of human interventions. Those businesses which are based upon AI for their conduct must be asked to subtract the AI inputs so that the proportions of human inputs could be ascertained, and then it will be realised the depth of AI intervention in today’s technological era. Mostly it has been contended that AI is the tool used by humans in inventing. With the Dabus case, the tool is inventing, Even if the case has been dismissed, it will be a start of the battle for an effective mechanism for AI-related Inventions.


*Author is an Advocate practicing in Allahabad High Court and can be reached at saranshchaturvedi09@gmail.com

[1] [2020] EWHC 2412 (Pat)

[2] Section 30. Nature of, and transactions in, patents and applications for patents

[3] Patent Form 7

[4] Section 9 Para 3, UK Copyright, Design and Patents Act, 1988

[5] Section 306, Compendium of the US Copyright Office

Click to access ch300-copyrightable-authorship.pdf

[6] Section 7. Right to apply for and obtain a patent

[7] Section 13. Mention of Inventor

[8] [2007] UKHL 43 at para 18

Case BriefsTribunals/Commissions/Regulatory Bodies

Intellectual Property Appellate Board (IPAB): The Bench of Justice Manmohan Singh (Chairman) and Lakshmidevi Somanath (Technical Member, Trademarks) and Makyam Vijay Kumar (Technical Member, Trademarks), barred the registration of “N 95” as a trade mark under Section 9(1)(b) of the Trade Marks Act,1999.

The rectification application was filed under Section 57 of the Trademarks Act, 1999 for removal of “N95” in class 10 registered in favor of respondent 1. Along with the main rectification application the present miscellaneous petition for stay of operation of registration of Respondent 1 for impugned mark pending disposal for the main Rectification Application had been filed.

Instant petition was filed seeking stay of operation of registration until the Rectification Application finally decided. 

It was further stated that N 95 is prima facie generic term that is used to provide the quality of the masks hence it is hit by Section 9 of the Act.

Petitioner submitted that it is a company incorporated under Indian Companies Act, 1913 and was engaged in the business of manufacture and sale of a variety of goods including towels, bath linen, bed sheets, carpets, etc. ever since then under its well-known and well established trade mark SASSOON which was earlier adopted by  Surinder Prakash Gupta, earlier in 1998 for the said business under his proprietorship firm.

Later, the petitioner on expanding its business started using the well-known trade mark SASSOON in relation to several kinds of masks, thermometers, PPE Kits, etc.

For effective marketing of its respiratory masks, the petitioner bonafidely started to describe its respiratory masks with the established term to describe such masks i.e. N95 masks by mentioning the same on its packaging and the product for denoting the genus, and/or type of the products.

Further the petitioner submitted that the said generic term N95 is being used since then in relation to the respiratory mask under the trade mark SASSOON.

On 20-11-2020, the petitioner received an email from www.amazon.in informing that the petitioner’s listing of its N95 masks under ASIN No. B0898N72RN had been removed by the platform apparently on the complaint filed on behalf of Respondent 1.

In the said email it was mentioned that the trade mark no. 4487559 was being infringed.

Petitioner also submitted that on enquiry it was found that respondent 1 had frivolously and fraudulently obtained an unlawful registration of the generic term N95 in class 10.

On being contacted, respondent 1 claimed that he shall only allow those business houses to use N95 as a term on their products who share their profits with him. He further claimed that he was in the process to totally block the business of the Petitioner and other manufacturers/traders and threatened the petitioner’s representatives that they should advise the directors of the petitioner to contact him for a “business deal” within 2 days, else he will totally destroy the business of the petitioner.

Decision

Bench on perusal of the submissions and material placed on record stated that:

“It is the established principle that a generic expression can never be granted registration and/or protection as a trade mark under the trade mark laws.”

In Nestles’s Products (India) Ltd. v. P. Thankaraja, 1977 SCC OnLine Mad 72 , it was opined by the Madras High Court that “…”INSTEA” has the tendency to monopolise all manufactured tea which goes by the generic description of ‘instant tea’ or ‘instantaneous tea’. To grant registration to this word-mark, would therefore make its owner a monopolist of a part of the ordinary vocabulary in which traders transact business with themselves and their customers.”

In Cadilla Healthcare Ltd. v. Gujarat Co-operative Milk Marketing Federation Ltd., 2009 (41) PTC 336 (Del.) (DB), it was discussed that generic term is only entitled to protection on the ground that it had acquired a distinctive character in the minds of customers and had acquired a well known status, same will be depending upon case to case. And thus in general the generic mark is not entitled to protection.

In Jain Riceland (P) Ltd. v. Sagar Overseas, CS(COMM) 796/2016, the Delhi High Court was clear when laying down the dictum that that the generic word cannot acquire distinctiveness.

In the decision of  ITC Ltd v. Nestle India Ltd., Madras High Court  stated that the mark ‘Magic Masala’ was not a descriptor of the product but rather a laudatory expression, and the same cannot be given monopoly or protection. Further the Court had observed that the terms ‘Magic’ and ‘Masala’ are commonly used terms by different manufacturers in the packaged food industry and it would be unfair to confer monopoly over the same expression.

Board in view of the above, expressed that,

the term N95 is a generic term in the mask industry, the same is not capable of being neither registered or protected as trade mark nor the same can be appropriated by any one entity.

Term N95 serves as an indicator in the trade to designate the kind, quality, intended purpose and other characteristics of the particular product which is non-proprietary in nature. The registration of the impugned mark was thus barred under the absolute grounds of refusal under Section 9 (1) (b) of the Trade Marks Act, 1999.

In the present case, wording of N 95 in the registered mark is descriptive of a characteristic of the masks, specifically that they filter at least 95% of airborne particles and are not strongly resistant to oil is a standard and is a class of respiratory devices and thus is a generic term.

Hence, the board held that respondent 1 cannot monopolize the N 95 mark in commerce as it is a generic term that refers to the genus of which the particular product is a species.

Can generic terms be registered?

Generic terms cannot be registered under trademark law and no protection to proprietor is provided.

The governing principle in cancellation/Rectification of registration Applications, “what is the primary significance of the registered mark to the relevant public” shall be the test for determining whether the registered mark has become the generic name of goods or services and in the present case not just the relevant public but various government authorities and institutions to refer to a particular type/standard of the respiratory mask as N95 and thus it is generic to the goods.

Further it was observed that  the Respondent does not have any bona fide intent to lawfully use the applied-for mark in commerce.

During the Pandemic COVID-19 crisis the shameless acts of the Respondent 1 in restricting the sales of the N95 Standard masks based on the Registration obtained by him would deprive the general public from accessing the N95 Masks that are declared as essential commodity by the Government.

Hence, it was held that:

“…given current public sentiment during this global public health crisis and since the dishonesty factor holds the cardinal principle until the Rectification Petition is finally decided the operation of the registration No. 4487559 in class 10 Registered under Certificate No. 1633656 shall remain stayed.”

Matter to be listed on 5-03-2021[Sassoon Fab International (P) Ltd. v. Sanjay Garg, 2020 SCC OnLine IPAB 170, decided on 04-12-2020]

Op EdsOP. ED.

Patents and trade secrets are the only two forms of protection available in the intellectual property regime that protect information. But the same innovation cannot enjoy protection under both forms of rights. Once a particular invention is patented, then the patentee cannot seek to protect the same invention and the information disclosed in the patent as a trade secret or confidential information by using a know-how agreement. While this is an established jurisprudence, what happens when information related to the patented innovation which is not disclosed in the patent is brought under claim for protection as trade secret? The Delhi High Court has answered this question while discussing the interplay between patents and trade secrets in the Indian jurisdiction its latest Judgment in Prof. Dr. Claudio de Simone  v. Acital Farmaceuatica Srl [1].

In this case, the plaintiff was the owner of a patented formula for a drug under the US Law. He entered into a patent licence agreement with one of the defendant companies to manufacture and import the drug into India. He separately entered into a know-how agreement with the defendant for the information on the strain selection and the blending ration of the bacteria which was maintained as a trade secret and was not disclosed in the patent. With regards to India, the plaintiff did not have a corresponding Indian patent for the drug formula and just entered into a know-how agreement with the defendant. Once the US patent expired, the know-how agreements were also terminated by the plaintiff due to the cheaper ingredients used by the defendants without his approval. Thereafter, the defendant group manufactured their own product similar to that of the plaintiff claiming it to be the same as the plaintiff’s formula. The plaintiff moved to the court for an injunction of the same. The Delhi High Court had to now analyse “whether an invention which does not qualify as patented product and has no property right therein, can acquire property rights by the third person entering into an agreement of exchange of Know-How and thus claiming confidentiality”. The plaintiff aimed to protect the information about the strain selection and blending ration which was not mentioned in the patent as a trade secret in India.

The Delhi High Court held that the information about the strain and blending ration cannot be protected as a trade secret. The ration was that once the patent over the invention has expired, all the information related to the innovation has gone into the public domain and hence no information related to the innovation can be protected as a trade secret.

Though both patents and trade secrets are IP rights that protect information, it has been long established that the decision to choose between patents and trade secrets does not necessarily have to be an “either-or” situation for the inventor. Under the layered approach for protection of innovations, both the patents and the trade secrets can be used to protect different aspects of the same invention. It has been understood widely that even after a patent application is published, patent protection and trade secrets are mutually exclusive. Both forms of protection can be pursued and should be considered for protecting valuable innovation. Hence, a more important inquiry is to decide which aspects of an invention to patent and which aspects to protect as trade secrets as both offer different types and levels of protections, and a company can use both to maximise the benefits afforded by these protections. This approach has been approved in many foreign jurisdictions as in Wyeth v. Natural Biologics Inc[2], wherein, a pharmaceutical company protected the method of manufacturing the product as a trade secret even after the patent had expired. The California Court in Altavion, Inc. v. Konica Minolta[3] has also held that if a patentable idea is kept secret, the idea itself can constitute information protectable by trade secret law.

In contrast, in the present case, the Delhi High Court cited Navigators Logistics v. Kashif Qureshi[4] to hold that trade secrets and confidential information are not equated to property in India. The Court rejected the possibility that a patent can be different from know-how and trade secrets by explaining Section 10 of the Patents Act[5] which requires the invention to be “describe(d) sufficiently to indicate in the title the subject-matter to which the invention relates and to fully and particularly describe the invention and its operation or use and the method by which it is to be performed, the best method of performing the invention which is known to the applicant…”. The Court used the provisions of the Patents Act to state that all the information related to the functioning and the operation of the innovation are presumed to have been disclosed in the patent and hence once the patent expires, the entire information transfers to the public domain and no trade secret and know-how can be claimed on any information relating to the patent thereafter. The Court has in effect rejected the usage of the layered approach of innovation protection which has been firmly upheld in the foreign jurisdictions. The Court only holds good an ideal scenario in which the method of working described in the patent is the only method of operation of the innovation and there is no separate know-how for the successful implementation of the innovation. With due respect, in our opinion the independent understanding of patents and know-how has been blurred by the Court. The “best mode” of operation which is required to be disclosed under the patent may not be the most convenient commercially viable method of operation of the innovation and this possibility has been overlooked by the court. The Indian IP protection regime can seek light from the foreign jurisprudence, wherein the layered approach has been upheld and fetch clarity amidst this conundrum.

The intersection of patents and trade secrets can be described as a fine balance between disclosure and secrecy. The Indian IP domain still has enough room for discussion with respect to the aspect of protection of information under both patents and as trade secrets especially after the rejection of the layered approach of innovation protection by the Delhi Court. Furthermore, the position of India with respect to trade secrets is not clear as there is no proper law implemented with regards the same and hence, the law should be made for better understanding which further should also be able to provide more clarity to the IP regime that protects information.


*Final year and penultimate year students (resp.) from NALSAR University of Law, Hyderabad

[1]  2020 SCC OnLine Del 476

[2]395 F.3d 897 (8th Cir. 2005).

[3] 226 Cal. App. 4th 26, 171 Cal. Rptr. 3d 714 (2014).

[4]2018 SCC OnLine Del 11321

[5] The Patents Act, 1970, No. 39, Acts of Parliament, 1970 (India).

Experts CornerGUJCOST - GNLU

Everyone has the right freely to participate in the cultural life of the community, to enjoy the arts and to share in scientific advancement and its benefits. Everyone has the right to the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author.

Article 27, Universal Declaration of Human Rights.[1]

Dampening economies, severe climatic conditions and depleting resources are changing the narrative of survival. As distress calls emerge from various countries, the collective conscience of humanity is being put to test. Domestically, rising woes of a weak economy are gradually taking form of a crises and it is time to contemplate alternate ways to sustainable productivity the benefits of which are accessible by a larger public. While development is imperative its
haphazardness must be contained now more than ever due to its impact on human rights.

What role does Intellectual Property (IP) play, one may wonder. To contextualise, World Intellectual Property Organisation (WIPO) brought forth a rather well-timed announcement on the IP theme of the year 2020 — Innovate for a Green Future [2] stressing the need for collective action. This instantly brings me back to my interpretation[3] of the 11th Global Innovation Index (GII) released in 2018 that was themed Energising the World with Innovations. GII, 2018 studied the importance of green technology and increasing requirement of encouraging innovations along the line.

A key finding in the detailed GII Report was that imbalances in regional innovations continue to hurt economic conditions as well as human development, indicating that innovation, Intellectual Property Right (IPR) and human rights must go hand in hand for a sustained development. This finding raises a pertinent question — whether there exists a relationship between human rights and IPR. Opposing views emerge and I am of the opinion that existence of a relationship between these rights cannot be denied, the trick question is interpretation of its nature i.e. whether it is a positive or negative one. In the next sections, I briefly look at the contentious human rights-IP relationship from the international viewpoint.

Human Rights and IPRs: A Connect-Disconnect

The debate on linkage of human rights and IPR has continually attracted two extreme views — a conflict approach and a coexistence approach. There are a broad range of political, economic, social, practical and philosophical issues that straddle the intersection of human rights and IP. These fascinating and challenging issues are attracting increasing attention from Judges, government officials, attorneys and scholars, whose activities are mapping the contours of a rapidly changing legal landscape.[5]

As quoted at the beginning here, Article 27 of the Universal Declaration of Human Rights (UDHR) enunciates an inherently strong connection between human rights and IPR. Following closely to Article 27, the International Covenant on Economic, Social and Cultural Rights (Icescr), under Article 15(1) further validates rights to take part in cultural life; to enjoy the benefits of scientific progress and its applications and; to benefit from the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author.[6]

Nearing the end of 20th century a critical movement began in the field of IPR when a host of nations made concerted demands for access to medicines, access to knowledge and protection of cultural and traditional knowledge systems thus demanding an IP regime that is respectful of the rights of indigenous communities as well as the diverse developmental levels. Although this idea was not new, it drew little attention until the formal internationalisation of Intellectual Property Rights (IPRs) through the Trade-Related Aspects of Intellectual Property Rights (Trips) agreement. Professor Peter K. Yu in fact suggests a lack of interest from policymakers, scholars and activists that was due in part to the arcane, obscure, complex, and highly technical nature of intellectual property law and policy and in part to the ability of countries to retain substantial policy space for developing their own intellectual property systems[7]. After several negotiations when Trips was finally formalised the global outlook towards IPR underwent a massive transformation however developing and less-developed countries remained belligerent on the potential conflicts of the agreement vis-à-vis realisation of economic, social and cultural rights. Later, the World Trade Organisation (WTO) emphasised the flexibilities built into the Trips agreement and other international trade agreements in order to boost the potential coexistence of human rights and IPR.

The debate on the two rights’ systems was advanced by the Committee on Economic, Social and Cultural Rights (Cescr) in 2006 through General Comment No. 17[8]. The comment provided authoritative interpretation of Article 15(1)(c) of the Icescr making clear that not all attributes of IPRs have human rights status[9]. To summarise, the comment differentiated between the two rights by linking human rights as safeguarding the personal link between authors and their creations and between communities and their collective cultural heritage whereas linking intellectual property regimes primarily to protection of business and corporate interests and investments. It further clarified that the scope of protection of the moral and material interests of the author provided for by Article 15(1)(c) does not necessarily coincide with what is referred to as IPR under national legislation or international agreements.

Coming back to the Trips agreement, the impact it has made is considered far-reaching than that of pre-existing international legal instruments. Taking stock of the post-Trips era, it is observed that some key elements of IP regime like subject-matter and scope of protection have expanded rapidly in treaties and in national laws — including the laws of developing countries in response to new online information technologies, the Trips and the adoption of maximalist IP protection standards and robust enforcement mechanisms in plurilateral, regional and bilateral “Trips Plus” treaties[10]. In the same timeline for assessing the trajectory of human rights regime, the changes include increased attention to indigenous peoples’ rights and traditional knowledge; the adverse consequences of expansive IP protection rules for economic, social and cultural rights; a growing awareness of the human rights responsibilities of multinational corporations; and attempts by those same corporations to invoke the human right of property as an alternative legal basis for protecting intangible knowledge assets[11].

Constantly changing global dynamics keep the debate between human rights and IPR alive. A persisting challenge in this environment is to strike the right balance between human rights and IPR. Often it is not easy to see how specific intellectual property norms interact with provisions of human rights instruments that are usually drafted in broader language[12]. Moreover, this challenge gets even bigger when there is not a one stop solution for all nations to abide given the differing rates of development.

Re-approaching the Discussion on Human Rights and IPRs

A considerable volume of literature subsists on the complex framework of human rights and IPR, however it is the need of the hour to reignite the discussion on how these rights fit together. A continued debate in resolving a complex inter-relationship between the two rights may generate solutions having a far-reaching impact on the growing concerns of sustainable development for all. I take cue from Professor Yu’s scholarly work to understand some global advancements that justify revisiting the human rights-IPR relationship[13].

First, the tendency of like-minded countries, mostly the developed ones coming together to set a higher benchmark through plurilateral agreements like the highly controversial Anti-Counterfeiting Trade Agreement (ACTA) or Trans-Pacific Partnership (TPP). For negotiations on ACTA no more than four per cent of the world’s developing countries were involved which raises questions on the genuity of stronger nations[14]. TPP contained controversial new protections for prescription drugs, including a new class of medications known as biologics[15]. It is pertinent to note during the Trips negotiations, developing nations voiced significant apprehensions on issues like transfer of technology, bio-piracy and reduction of traditional or indigenous communities’ control over their pool of genetic, natural and cultural resources and restrictions on access to medicines as a serious impediment to enjoyment of the right to health.

Second, the possibility that current enforcement measures run a risk of turning obsolete due to rapid development of disruptive technology alongside sophisticated networks of piracy and counterfeiting which in turn threatens human rights in many cases. For example, a producer’s lost opportunity of earning premium over his product registered as a geographical indication in India sold over the internet without his knowledge. How does the producer enforce his rights on cross-border online infringement? Must he lose out on his right to protect economic, creative and cultural aspects residing in his IP owing information asymmetry arising from an online platform where the consumer is unaware of the product origin and rights in it.

Third, a larger group of individuals are collectively participating in creative communities producing “user-generated content”, a term that has stormed the world of IP in recent times meaning thereby that the ability to create in today’s digitally advanced world is no longer limited to a specific class of intellectual workers or creative labourers. The growing community of creative individuals means the human rights to benefit from creations are getting more universal in nature.

Looking at the above reasons, we can safely deduce the gravity of issues like digital advancements and their broad implications (not necessarily deleterious). It is also safe to say the re-examination of the inter-relationship between intellectual property and human rights is justified. Research in this area can prove beneficial for necessary collective actions at the international platform.

Conclusion

Do human rights connect with the entirety of IPR? Are certain IPR attributes immune from the human rights purview? While analysing the inter-connection, which rights should be considered from the giant structure of human rights? The answers to these questions inevitably depend on one’s
worldview, basic assumptions,  ideological values and philosophical dispositions[16].

Challenging as it is but this relationship between human rights and IP rights needs renewed and collective attention. After thorough assessment of drastic changes threatening sustenance of several habitats around the globe, nations might want to explore the possibility of human rights framework existing within the contours of intellectual property regime in order to encourage innovations and creations towards a green globe that reach out to humanity as a whole. While individual goals and benefits matter it is certainly time to think of collective and sustainable development.


*Hetvi Trivedi is Research Associate, GNLU-GUJCOST Research Centre of Excellence in IP Laws, Policies & Practices, Gujarat National Law University and can be contacted at htrivedi@gnlu.ac.in.

[1] Universal Declaration of Human Rights, 10-12-1948

[2] World Intellectual Property Day — 26-4- 2020 Innovate for a Green Future, World Intellectual Property Organisation, available at <https://www.wipo.int/ip-outreach/en/ipday/>.

[3] Hetvi Trivedi, Moving Towards Better Integration of Energy Innovation and Intellectual Property, (2018) PL (IPR) September 89, available at <https://blog.scconline.com/post/category/experts_corner/gujcost-gnlu/>.

[4] Laurence R. Helfer, Mapping the Interface Between Human Rights and Intellectual Property, Research Handbook on Human Rights and Intellectual Property, Ed. Christophe Geiger, Edward Elgar (2015) 6-15, 6.

[5] Ibid

[6] International Covenant on Economic, Social and Cultural Rights, 16-12-1966.

[7] Peter K. Yu, Intellectual Property and Human Rights in the Non-Multilateral Era, 64 Florida Law Review (2012) 1045- 1100, 1049.

[8] UN Committee on Economic, Social and Cultural Rights (CESCR), General Comment No. 17: The Right of Everyone to Benefit from the Protection of the Moral and Material Interests Resulting from any Scientific, Literary or Artistic Production of Which He or She is the Author (Art. 15, Para. 1 (c) of the Covenant), 12-1-2006, E/C.12/GC/17, available at <http://docstore.ohchr.org/SelfServices/FilesHandler.ashxenc=4slQ6QSmlBEDzFEovLCuW1a0Szab0oXTdImnsJZZVQcMZjyZlUmZS43h49u0CNAuJIjwgfzCL8JQ1SHYTZH6jsZteqZOpBtECZh96hyNh%2F%2FHW6g3fYyiDXsSgaAmIP%2BP>.

[9] Id, 1.

[10] Supra note 4, at 7.

[11] Ibid

[12] Catherine Trautmann, Foreward, Research Handbook on Human Rights and Intellectual Property, Ed. Christophe Geiger, (Edward Elgar 2015) xii-xxiv, xii.

[13] Supra note 7, at 1055

[14] Supra note 7, at 1056

[15] James McBride, Andrew Chatzky, What is the Trans-Pacific Partnership?, Council on Foreign Relations, available at <https://www.cfr.org/backgrounder/what-trans-pacific-partnership-tpp>

[16] Supra note 7 at, 1100

Case BriefsHigh Courts

Delhi High Court: Rajiv Sahai Endlaw, J., while dismissing the present suit wherein plaintiff was found with no rights asserting which suit was filed, held that

“Rights of the applicant for registration as a plant variety are inchoate and not crystallized till grant of registration.”

Plaintiff pleaded that it is in business of research, production, processing, marketing and sale of high quality hybrids and varietal seeds. Defendant 1 and 2 are ex-employees plaintiff who have joined employment and of are currently employed with defendant 3 which a competitor of plaintiff.

Further it has been pleaded by the plaintiff that

  • to protect sensitive and confidential information relating to the product and product development know-how, varieties, hybrids, parent-lines, breeding strategies and associated know-how and trade secrets developed by the plaintiff, requires its employees to enter into an employment agreement and undertake not to disclose any such sensitive and confidential information to any third party during the course of employment and at any time thereafter.
  • plaintiff mandates its employees to execute a Deed of Assignment of all rights, title and interest to any and all intellectual property developed by the employee or in the development of which the employee has contributed, during the term of the employment with the plaintiff, to the plaintiff
  • defendants 1 & 2 had access to the plaintiff’s intellectual property including trade secrets such as the parent lines of the plaintiff’s hybrids and seeds used for cultivation of the parent lines of the plaintiff’s hybrids, breeding strategies etc.
  • One of the hybrid varieties developed by the plaintiff is the Cauliflower Hybrid no.SCFH-130 sold in the market under the name ‘Katreena’

Plaintiff came across packets of hybrid cauliflower seeds in the market which carried the photographs of the plaintiff’s hybrid cauliflower SCFH-130, being marketed under the name ‘Riya’ and claiming almost identical characteristic features, which later through tests were proved to be of 100% identical characteristics features.

Plaintiff alleged that defendant 3 knowingly misappropriated the trade secret parent lines of plaintiff and also acquired confidential information relating to breeding strategies, soil conditions for breeding impugned hybrid from defendant 1 and 2.

Defendant 3 has indulged in unfair competition by wrongfully exploiting the plaintiff’s valuable confidential information, trade secrets, copyright and other intellectual property rights.

Thus, plaintiff claimed permanent injunction restraining defendant 1 and 2 from disclosing or using any confidential information plaintiff including parental materials, etc., defendant 3 from disclosing or using the same.

Sole ground for rejection sought of the plaint being bar of the jurisdiction of this Court, contained in Protection of Plant Varieties and Farmers’ Rights Act, 2001.

Court in view of the above, examined the provisions in context of the present issue and stated that rights conferred by the PPVFR Act, on the breeder of a plant variety, are thus a facet of intellectual property and fall in the same domain as trade marks, copyright, patents and design.

Bench while analysing the issue also stated that,

I wonder, how a breeder of a new plant variety, which in accordance with law has already been placed in public domain by marketing thereof, can be left remediless against the person who, taking advantage of the fact that registration takes time, violates the rights of the breeder.

During the hearing, it was felt that the relief seeking which the suit had been filed was within the domain of Registrar of Plant Varieties in exercise of powers under Section 24(5) of the PPVFR Act and the jurisdiction of this Court thus was barred under Section 89 thereof.

It was thus felt that the suit was not entertainable and plaint liable to be rejected.

Court also observed that the commercial exploitation of a plant variety by a person who is not the breeder thereof but who may have come across such variety, before the breeder thereof has obtained registration of the same under the PPVFR Act and breeder being remediless till then, but on further consideration find that it is not as if the breeder would be remediless.

Breeder, once has been granted registration, in an action for infringement can always claim profits earned by such infringer for the pre-registration period as well.

Confidentiality and Secrecy obligations can only be with respect to a right which the person is entitled to protect. What the plaintiff did not have any right in, the plaintiff could not have protected by entering into agreements with the defendants 1 and 2.

Plaintiff, prior to obtaining registration under the PPVFR Act, cannot maintain a suit to restrain the defendants from infringing the rights which are yet to be conferred on the plaintiff on grant of registration.

Thus, the Court referring to the decision of Prabhat Agri Biotech Ltd. v. Registrar of Plant Varieties, 2016 SCC OnLine Del 6236 held that,

Rights of the applicant for registration as a plant variety are inchoate and not crystallized till grant of registration and the Registrar of Plant Varieties is not entitled to, pending registration, restrain another from commercially exploiting the plant variety, registration of which is sought, so will this Court as the Civil Court be not entitled to protect the claimed rights till crystallized by way of registration. [Sungro Seeds Ltd. v. Dr S.K. Tripathi, 2020 SCC OnLine Del 591 , decided on 15-05-2020]

Case BriefsHigh Courts

Kerala High Court: Shircy V, J. held that an author has the legal right to protect his intellectual property even after he has sold his authorship while also directing the trial court to take all endeavour to dispose of the case, within six months.

The appellant is a film director and a scriptwriter, who claims to have researched the history of a grand ancient festival ‘Mamankam’, and on this subject, he had written a script for a film. Subsequently, he met the first respondent and an agreement was made for making a film on it.

The counsel for the appellant contended that though the appellant was initially the director, he was replaced shortly after and the film was completed after changing and damaging the script. Hence, a suit was filed, with a petition for interim injunction to restrain the respondents from releasing or distributing the film, but it was denied by the District Court.

The counsel for the respondent Saiby Jose Kidangoor and V. Ramkumar Nambiar contended that the appellant had sold his authorship for a sale consideration of Rs 3 Lakh and so he is neither entitled to get the credit of the film regarding story or screen play nor entitled to stop the release of such a big-budget film.

In deciding the issues, the Court analysed the Copyright Act, 1957 and emphasized on Section 2(d) which gives the definition of word ‘author’, Section 18 which explains ‘assignment of copyright’ and Section 57(1) of the Act which prescribes that even after assignment of the copyright in a work, the author of a work will have special rights to claim the authorship of the work.

The Court further remarked that according to Section 57 of the Copyright Act, 1957, rights of the author is always protected as it places the author in an elevated position and copyright being a form of the intellectual property gives rights to the creators for their work. The Court further added that it is doubtless that the author of the work is the creator of literary art and it is his idea developed as a screenplay to make the movie. So here the appellant is the rightful owner of the script. However, the Court had to balance the appellant’s concern that the film is made by damaging his original script, with the respondents’ unease regarding the imminent release date of the film. 

The Court, taking a middle path observed that though the appellant is the actual owner of the script but the film is to be released in almost all cities in India as well in foreign countries and all arrangements for this have been made, and if the release is postponed for the reason of the name of the scriptwriter, the damages that would be caused to the respondent “will be huge and is beyond imagination”.

Considering all the facts and issues, the Court held that the film may be released without displaying anyone’s name as the scriptwriter thereof till the disposal of the suit while also directing the trial court to dispose of the case within six months. [Sajeev Pillai v. Venu Kunnapalli, 2019 SCC OnLine Ker 5338, decided on 11-12-2019]

Hot Off The PressNews

India has joined three WIPO treaties designed to ease the search for trademarks and industrial designs, helping brand owners and designers in their efforts to obtain protection for their own work.

 WIPO Director General Francis Gurry received on 7-06-2019, India’s instruments of accession to the Nice Agreement, Vienna Agreement and the Locarno Agreement from Ambassador Rajiv K. Chander, Permanent Representative of India to the United Nations and other International Organizations in Geneva. The treaties will enter into force for India on 7-09-2019.

  • Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks [India becomes the 34th member of the Vienna Agreement]

  • Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks [India becomes the 88th member of the Nice Agreement]

  • Locarno Agreement Establishing an International Classification for Industrial Designs [India becomes the 57th member of the Locarno Agreement]


[News dt. 07-06-2019]

World Intellectual Property Organization

Experts CornerGUJCOST - GNLU

What do Google’s search algorithm, Coca-Cola and KFC’s original recipe, the selection criteria for the New York Times annual best seller list and the Big Mac special sauce recipe, share in common? These valuable recipes, methods and selection criteria are protected as trade secrets. Also called the “other intellectual property right (IPR)”, trade secrets does not dominate the popularity index with regard to the types of IP protection sought, corporations and individuals generally prefer other modes of IP protection. However, in the family of intellectual property rights, this right may be the oldest form because who does not have secrets. And what better measure to protect the secret than by keeping it undisclosed? Here a line of differentiation must be drawn between a personal and a professional secret as some professional secrets hold commercial value, like Coca-Cola’s recipe. What is the status of this form of IPR? A lack of consensus is found among nations and scholars alike regarding the recognition and treatment of trade secrets.

In this age of overcommunication, Coca-Cola’s recipe is one of the best kept secrets in the world. The company goes nostalgic in an account of its 125 years journey and presents proudly on its website some facts of its recipe.[1] The recipe was developed by John S. Pemberton, a pharmacist in 1886 and has been closely guarded, for more than a century.[2] Competitors have fiercely hunted for the recipe, yet apparently, this best kept secret has aided the Coca-Cola Company to become the successful, globally recognised brand it is today. Similarly, KFC has been a secret keeper for Colonel Harland Sanders’ recipe of 11 herbs and spices used by the fast food restaurant chain which has become its flagship product. The recipe is more than 70 years old and was apparently scribbled on the back of a door, which is being followed till date.[3] KFC has gone to a great length to protect this prized secret recipe, when it recently built a brand new, hi-tech home for the original handwritten recipe where the recipe is protected in a digital safe weighing more than 770 pounds encased in two feet of concrete with a 24-hour video and motion detection surveillance system.[4]

Where do these facts leave trade secrets with regard to the protection they provide and most importantly where does inclusion of trade secrets as a form of IP protection stand? Michael Risch opines trade secrets to be curious anomalies in intellectual property law and goes to argue that despite being the most important and litigated form of intellectual property, trade secrets are given derogatory treatment citing another work which terms this form “parasitic”.[5] On the contrary, trade secrets are justified by the economic benefits that flow from their existence, most notably incentives for businesses to spend less money protecting secret information or attempting to appropriate secret information.[6]

My Way or Yours? A Historical Perspective to Protection of Trade Secrets

The history of trade secret law is an interesting study in how certain intellectual property rights have developed. Whereas copyright, patent and trade mark law find legal justification through statutes, the trade secret concept and related reliefs grew out of the common law. Indeed, the very assumptions underlying patent and copyright laws—that government-granted rights can serve to incentivise the creation and sharing of new ideas and expression—are diametrically opposed to the notion of keeping information secret to gain a competitive advantage.[7]

The concept that so-called business or “trade secrets” were entitled to legal protection spread rapidly throughout the world. As early as the Renaissance, most European nation-States had laws that protected businesses (notably, the guild cartels) from those who used their secret processes and ideas without permission. During the Industrial Revolution, courts and legislatures translated these early laws into statutes that protected “industrial secrets”. Many of these statutes are still in force today, albeit in modified form. The modern trade secret regime traces most clearly and directly to the Industrial Revolution and is primarily an Anglo-American doctrine.

Currently, nations differ regarding their standpoint on treating trade secrets. Some have chosen to grant statutory relief to an act of trade secret violations while others treat the violations through popular principles of common law breach of confidence, etc. Looking at how nations seek to work together on various legal issues it is surprising how a unified treatment of trade secrets has not been possible. There is clearly no consensus on whether it be treated as a creature of contract law, tort, property or criminal law. With the continued confusion, none of these different justifications have proven entirely persuasive. Worse, they have contributed to inconsistent treatment of the basic elements of a trade secret cause of action, and uncertainty as to the relationship between trade secret laws and other causes of action.[8] Robert Bone has gone so far as to suggest that this theoretical incoherence suggests that there is no need for trade secret law as a separate doctrine at all.[9]

There is no State agency that “issues” (or even registers) trade secrets, thus categorising it separately from other forms of IP.[10] At the judicial level, courts will find misappropriation of trade secrets in two circumstances: (1) where the secrets were obtained by theft or other improper means, or where they were used; or (2) disclosed in violation of a confidential relationship agreement. However,  trade secret laws do not protect against independent discovery or invention. Nor do they prevent competitors from “reverse engineering” a legally (read fairly) obtained product to determine the secrets contained inside. Violations of trade secrets entitle the owner to damages and in some cases injunctions against the use or further disclosure.[11]

The International Framework of Trade Secrets

At the international level, the Trips agreement was the first international agreement to accord express protection to trade secrets. The agreement while defining trade secrets laid out its approach, based on the notion that in order to establish and maintain a fair and free market, protection against unfair competition should include protection for undisclosed information. While presenting this approach and defining the term, the Trips agreement referred to the prior existing protection as presented in the Paris Convention for the Protection of Industrial Property.

Trade secrets are dual in nature, they are confidential as well as commercial. To get the commercial benefit out of the secret, the owner must share it with a limited number of people or partners. Thus, laws expect and account for a certain amount of protected disclosure, within a constrained circle.[12] Nevertheless, even if trade secrets are not “secret” in the strictest sense of the term, they must, in fact, remain non-public and known only to a limited number of people.[13] The Trips definition of trade secrets reflects a broadly similar understanding of the term across nations and addresses its dual nature as confidential but commercial. Moreover, in order to place all nations on a similar footing, the Trips platform took into consideration then current practices in many countries while laying down a path for shaping subsequent laws.

      7. Protection of undisclosed information.[14]

Article 39

  1. In the course of ensuring effective protection against unfair competition as provided in Article 10bis of the Paris Convention (1967), members shall protect undisclosed information in accordance with Para 2 and data submitted to Governments or governmental agencies in accordance with Para 3.[15]
  2. Natural and legal persons shall have the possibility of preventing information lawfully within their control from being disclosed to, acquired by, or used by others without their consent in a manner contrary to honest commercial practices so long as such information[16]:

           (a) is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question;

                (b) has commercial value because it is secret; and

                (c) has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret.

  1. Members, when requiring, as a condition of approving the marketing of pharmaceutical or of agricultural chemical products which utilise new chemical entities, the submission of undisclosed test or other data, the origination of which involves a considerable effort, shall protect such data against unfair commercial use. In addition, members shall protect such data against disclosure, except where necessary to protect the public, or unless steps are taken to ensure that the data are protected against unfair commercial use.[17]

These three conditions define trade secrets in a manner covering a potentially very large scope of economic activity. The range of subject-matter covered by trade secrets may be open-ended, though often trade secrets fall into one of two broad categories: technical information (e.g. technical plans and formulae) and confidential business information (e.g. customer lists and marketing strategies).[18] However, an interesting point is that trade secrecy does not provide an exclusive right for a specific time-limit, which means its discovery by a second party through fair means or entry in the market, and they can run out in the regular course of the competition, unlike patented inventions or copyright protected content.

Conclusion

Trade secrets are a form of intellectual property, serving the same purpose as patent, trade mark and copyright laws i.e. promotion of innovation. While protection under trade secrets results in reduced investment in terms of money and time, on the contrary it does not provide an exclusivity over the secret, if a second party learns the information through fair means in the market. A proper understanding of trade secrets as an intellectual property right will let them be absorbed by society and encourage the formation of a law designed in order to promote innovation.

With varying patentability standards across nations, patent rights have become increasingly uncertain, especially when there is a movement in many countries to further raise the bar as far as the patentability criteria are concerned. To address this situation if the trade secret law is strengthened across the world, it will provide a viable option to inventors to keep their inventions secret. More importantly, stronger protection under trade secret law will ensure enhanced protection to tacit knowledge or know-how that may complement a patent, enabling the owner to protect his patented technology better in fact even beyond the patent period.

India does not have a dedicated law in place to protect trade secrets, however, there is a rich stock of jurisprudence that got introduced through cases, covering the definition and scope of trade secrets, protection remedies and so on. However, there is an increasing expectation that India introduces a statutory protection for trade secrets but time alone can tell whether it is to take place.


*Hetvi Trivedi is Research Associate, GNLU-GUJCOST Research Centre of Excellence in IP Laws, Policies & Practices.

[1]  Coca-Cola journey, available at <https://www.cocacolacompany.com/content/dam/journey/us/en/private/fileassets/pdf/2011/05/Coca-Cola_125_years_booklet.pdf>.

[2]  Ibid.

[3] What Made Us Great is Still What Makes Us Great, available at <https://www.kfc.com/about>

[4]  R. Mark Halligan and David A. Haas, The Secret of Trade Secret Success, available at  <https://www.forbes.com/2010/02/19/protecting-trade-secrets-leadership-managing-halligan-haas.html#77ea0d661372>.

[5]  Michael Risch, Why do we have Trade Secrets, p. 3 (2007).

[6]  Id., p. 5.

[7]   Id., p. 6.

[8]  Miles J. Feldman, Toward a Clearer Standard of Protectable Information: Trade Secrets and the Employment Relationship, 9 High Tech. LJ 151, 161-163 (1994).

[9] Robert G. Bone, A New Look at Trade Secret Law: Doctrine in Search of Justification, 86 California Law Review 241 (1998).

[10] Peter S. Menell, Mark A. Lemley and Robert P. Merges, Intellectual Property in the New Technological Age: 2017, Vol. I: Perspectives, Trade Secrets and Patents, p. 62 (2017).

[11]  Ibid.

[12]  OECD, Enquiries into Intellectual Property’s Economic Impact, p. 132 (2015).

[13]  Ibid.

[14]  Trips agreement, available at <https://www.wto.org/english/docs_e/legal_e/27-trips.pdf>.

[15]  Ibid.

[16]  Ibid.

[17]  Ibid.

[18] Id., at p. 62.

 

Conference/Seminars/LecturesLaw School News

Date : 15 February 2019

Time : 10:45 AM to 5:00 PM

The ILS IPR Cell is organizing One Day National Seminar on: “Unveiling Ventures of Intellectual Property Law”. This Seminar is being organized to introduce participants to the practical aspects of Intellectual Property Law. Intellectual Property Law (IP) refers to creations of the intellect for which a monopoly is assigned to designated owner by law. Intellectual property rights (IPRs) are the protections granted to the creators of IP. Intellectual Property law has evolved for centuries and by late 20th century, it became common place in majority of the world.

Topics to be covered:-

  • Non-Conventional IPRs in India
  • Changing Dimensions of Patent Regime in India”
  • IPR and Biodiversity in India
  • Interface of IPR and Competition Law

List of Speakers:-

  1. Dr.Feroz Ali Khader, MHRD IPR Chair, IIT Madras
  2. Ms. SunitaSridharan CEO, SKS Law Associates
  3. Dr. Arul George Scaria Faculty, NLU Delhi
  4. Rahul Ajatshatru Founder and Principal Attorney, AJATSHATRU Chambers

Who Can Participate?

  1. Law students from all courses.
  2. Academicians
  3. Jurists
  4. Legal practitioners
  5. Professionals from law firms
  6. IP Professionals
  7. Corporate counsels
  8. Medical professionals and practitioners
  9. Public health activists
  10. Authors
  11. Actors, dramatists and cultural performers
  12. Professional comedians
  13. Enthusiasts of the laws of Constitution, Taxation, IPR and Competition

Participation shall be in the form of attendance and interaction in sessions.

Registration Procedure and Fee Schedule :

Students (ILS) Rs. 400/- inclusive of GST
Students ( Non-ILS) Rs. 700/- inclusive of GST
Professionals Rs. 1000/- inclusive of GST

Fee is inclusive of the reading material, lunch and Certificate of participation (only for outside ILS) for the participants

All payments shall be made online through the link

Last Date of Registration: 10th February 2019.

 CONTACT DETAILS :

(1) FACULTY CONVENERS :   Dr. SUVARNA S NILAKH

(2) STUDENT CONVENERS

(a) CHAITANYA REDDY      +91-8143593098

(b) PRANITA SABOO            +91-9404509717

(c) SHREYA KUNWAR         +91- 8777295355

(d) SURABHI SMITA             +91- 7021409156

Call For PapersLaw School News

The Cell for Studies in Intellectual Property Rights (CSIPR), incorporated under the aegis of Prof. (Dr.) Ghayur Alam, Chair of IP Law at the National Law Institute University, Bhopal (NLIU), is now accepting submissions for Volume 8 of the NLIU Journal of Intellectual Property Law.

About the Journal

The NLIU Journal of Intellectual Property Law, published annually, is run by CSIPR at NLIU, guided by our illustrative faculty and is reviewed by a body of peers comprising our alumni. It aims to create meaningful debate and discourse to help build a fair and equitable regime of intellectual property law and to study the dynamic confluence of the academic and the transactional world presented by these laws.

The Journal has, in its past Volumes, published articles and papers by academicians, lawyers and law students from across the world and seeks to expand its reach through Volume 8. Submissions are invited for genuine, original and unpublished written works. We invite contributions from persons across the legal profession-research scholars, professionals, students and others for this issue.

Vision Statement

“To promote the culture of knowledge creation in India.”

Mission Statement

“To promote research and sharing of ideas in the field of Intellectual Property Law.”

Categories for Submission

Submissions can be made under the following categories:

Articles (3500-6000 words*): Article is expected to do a thorough and in-depth analysis of the problem(s) and idea(s). It must take the discussion to a logical and meaningful conclusion and must contribute to existing knowledge in the field of intellectual property law.

Notes (2000-3500 words*): Note must either initiate a new discussion or provide a summary of a recent development in the field of intellectual property law.

Case Comments (2000-5000 words*): Case Comment must be an analysis of a recent judgment pointing out its contribution to the development of intellectual property law. If the judgment selected has not decided the case of first impression, the Comment must provide a comparative analysis of all the judgments from the same jurisdiction on the same subject matter.

Book Review (1000-3000 words*): Book Review must identify and explain the strengths and weaknesses of a recently published book.

*The word limit is inclusive of footnotes. Kindly adhere strictly to the word limit prescribed.

Guidelines for Submission

All submissions must be accompanied by an abstract not exceeding 300 words. The topic must be of contemporary relevance. The abstract must expressly include the novelty and usefulness of the idea that the author wishes to put forth and must categorically mention the specific contribution of the article, beyond the existing available literature, and the practical utility of his/her recommendations.

The introduction must introduce the topic, explain in brief the researchability of the topic, and delineate the structure of the article. The author must also identify the works already existing on the topic, pointing out any gap in the existing literature and clearly formulate the research problem and the hypothesis. Overall, the submission must meet the requirements of novelty and usefulness.

Co-authorship is permissible up to a maximum of two authors. The body of the manuscript should be in Times New Roman, Font Size 12 and in 1.5-line spacing. The footnotes should be in Times New Roman, Font Size 10 and in single line spacing. The citations must conform to The Bluebook style of citation, 20th edition. (attached below)

Kindly send your manuscript in MS Word (.docx) format to nliu.journalofiplaw@gmail.com, latest by 20 December 2018, 11:59 PM.

The subject of the e-mail should be “Submission for Volume 8 – (Title of the manuscript)”.

The submission should be accompanied by a Covering Letter which must include the following details:

  • Name of Author(s)
  • Contact Details – Address and Mobile No.
  • Name and Address of Institution
  • Course currently being pursued/Academic Qualifications

Copyright: The submissions for the Journal must not have been previously published or submitted for publication elsewhere.  The contribution presented and accepted for publication and the copyright therein shall be the intellectual property of NLIU. 

Contact 

In case of any queries kindly drop an email at nliu.journalofiplaw@gmail.com or contact:

  • Udyan Arya Shrivastava, Convenor, CSIPR: +91 8982605691
  • Manasvi Tewari, Co-Convenor, CSIPR: +91 94071166411
Experts CornerGNLU - Microsoft

Blockchain — the technology infrastructure behind bitcoin and many other emerging platforms have been a hot topic recently, with multiple industries exploring their possibilities and new blockchain use cases emerging almost every day. Blockchain technology is poised to revolutionise almost everything from supply chains including illegal fishing and human rights abuses. It is flourishing in an open-source environment, which raises the question whether our current intellectual property (IP) laws are fit for the purpose to foster innovation.

 

 

 

 

 

What is blockchain

Blockchain is an open ledger of information that can be used to record and track transactions, and which is exchanged and verified on a peer-to-peer network. Blockchain and other distributed ledger technologies create a trustworthy and transparent record by allowing multiple parties to a transaction to verify what will be entered onto a ledger in advance without any single party having the ability to change any ledger entries later on. Each transaction or “block” is transmitted to all the participants in the network and must be verified by each participant “node” solving a complex mathematical puzzle. Once the block is verified, it is added to the ledger or chain.

From the perspective of information, the real innovation of distributed ledger technology is that it ensures the integrity of the ledger by crowdsourcing oversight and removes the need for a central authority. In other words, transactions are verified and validated by the multiple computers that host the blockchain. For this reason it is seen as “near unhackable”, because to change any of the information on it, a cyberattack would have to strike all copies of the ledger simultaneously. While the traditional concept of blockchain is an open and anonymous network, there are also “private” blockchains which prescreen as to who is allowed to administer the ledger.[1]

Attractive beyond the world of fintech

Since distributed ledger technology creates a secure, time-stamped and immutable chain of information, it is already finding applications in brand protection and enforcement, marketing and consumer engagement. More use cases seem to emerge on an almost daily basis. The technology has fast become attractive beyond the world of fintech. It is already being used to track the progress of goods in a supply chain, which is of interest to many IP-intensive sectors including the pharmaceutical, automotive, luxury and consumer goods industries, where the traceability of goods is important and counterfeit and grey goods are of concern.[2]

Blockchain is attractive to many different industries because of its potential uses. Different types of data can be added to a blockchain, from cryptocurrency, transaction and contractual information to data files, photos, videos and design documents. And the technology is continuing to develop with new types of distributed ledgers such as hashgraph software, which seeks to address issues of scalability.

Intellectual property laws incentive theory

Intellectual property laws, such as patents and copyright, are premised on the incentive theory. To incentivise people to create, they are given, in effect, a monopoly on their creations and, can go to court and stop others from free riding on their work.

The digital world has made the tension between innovators and free riders even more acute. In the pre-digital era, copying a book incurred considerable costs for the copier. Now, given that digital files can be copied indefinitely for near zero cost, one could argue that we need even stronger IP laws to prevent rampant and unfair copying.

But theory does not always match reality. History is littered with examples of patents harming rather than aiding innovation. James Watt’s steam engine was an advance over existing steam engines, yet the technology could not be built upon because of Watt’s patents. It was not until the patents expired — one of which had inexplicably been extended by Parliament — that steam power came into its own in driving the industrial revolution.

Blockchains and IP rights

Companies are investigating blockchain applications such as IP rights clearance and royalty payments, and some say the technology has great potential for managing digital rights such as copyright. They could also potentially be used to embed digital rights management into the digital signature structure, or to record the provenance of content and track its use.

The “great excitement in this industry is palpable”, and the issue of whether any blockchain technology should be patented, which had been put to one side until now, is growing in importance.

A search of the term “blockchain” showed that no developers have any issued patents containing that name, but the companies interested in using the technology have filed blockchain patent applications. Published applications containing the term “blockchain” have been filed by Texas Instruments, Panasonic, Marvell, LG, Intel, Apple, Qualcomm, IBM, Toshiba and Samsung, said Keller. Blockchains are expected to create new markets first in the financial services sector.

“Speed bumps”: Court decisions and open source

The main “speed bumps” in the IP landscape around blockchains are whether they are patentable, the intersection of IP and open source, and the question of trade secrets and open source.

The 2014 US Supreme Court decision in Alice Corpn. v. CLS Bank International[3] held that a claim cannot be drawn entirely to an abstract idea. The High Court established a two-set test for determining whether a computer-implemented invention is patent-eligible, with most of such inventions being denied patents.

Since Alice, however, two further decisions, DDR Holdings, LLC v. Hotels.com, LP[4] and Enfish, LLC v. Microsoft Corpn.[5], have raised hopes that software patents may be more easily obtained, but it is still a challenge.

Compatibility issues between the open source GNU General Public License v3.0 and Apache 2.0 create another problem. There are hundreds of different open source licences, but the six most common licences cover around 90 per cent of open-source projects. Around 55 per cent use a “copyleft” licence which offers people the right to freely distribute copies and modify the software as long as the same rights as in the original open-source licence are preserved in the derivative version. But GPL may not be compatible with a company’s licensing strategy, and GPL 3.0 also prohibits the use of trade secrets.[6]

These issues can be resolved. “But it is important that people understand the impact of their decision to use open source (e.g., what type of open-source licence to use) has on IP as well as the impact of their decision to, say, patent an invention used in a blockchain on what types of open-source licences would be acceptable.”[7]

Conclusion

It is a matter of finding the right balance to encourage and reward innovation with practical solutions that the marketplace accepts. Before you go to market, questions about whether to use trade secrets or copyright to protect blockchain technology show how early in its infancy the industry is. Patents will be the primary mechanism for protecting IP in blockchains, but the situation will become clearer as the sector develops.

Only 685 patents have been filed in the US. And, unlike, say, a pharmaceutical innovation which is of substantial benefit for a company to own and keep closed, there is little value in making blockchain platforms proprietary.

The platforms need to be open and free of IP entanglement so innovators can add value through applications or by providing better services than rivals. Higher up the systems, however, above the blockchain network, patents for proprietary technology could make sense.

 

Vaishali Singh is Research Associate, GNLU-Microsoft IPR Chair, Gujarat National Law University.

[1] Ament, D. Report and Recommendations of the Technical Upgrades Special Project Team, 2015. Available at <https://www.copyright.gov/technology-reports/reports/usco-technicalupgrades.pdf>.

[2] Boucher, P., Nascimento, S., and Kritikos, M. How blockchain technology could change our lives, 2017. Available at <https://pdfs.semanticscholar.o rg/0a09/9da451b5be9a5c7fa6cbd66afec33a240c91.pdf>.

[3] 189 L Ed 2d 296 : 134 S Ct 2347, 2354 : 573 US—(2014).

[4] 773 F 3d 1245 (Fed Cir 2014).

[5] 822 F 3d at 1339, 1327 (Fed Cir 2016).

[6] McMullen, G. Blockchain & Law in 2017, 2017. Available at <https: //medium.com/ipdb-blog/blockchain-and-law-in-2017-f 535cb0e06c4#.96qcsc1mu>.

[7] ibid.

Experts CornerGNLU - Microsoft

Intangible form of property

Intellectual property is an intangible form of property. It is a creation of human intellect which forms an integral part of our life. Starting from an alarm clock that annoys us in the morning to an interesting novel that makes us dream at night, we are surrounded by the fruits of human creativity and innovations. It serves to protect creative and inventive human expressions. Intellectual property rights, being imperative tools for the economic and industrial development of the nation, the laws protecting them have assumed great importance in the era of globalisation and privatisation.

IP: Source of value and wealth generation

The term “intellectual property” which was hardly known to the CEOs in early ‘90s has become one of the most significant parts of their business strategy.[1] Intellectual property has great significance for any large scale, medium scale or even a small startup as it has become an important source of revenue generation. In this age of knowledge and technology, generation of revenue is through creation of intellectual wealth. The intellectual wealth so generated requires strategic and structured approach towards identification, protection and exploitation for revenue generation. The source of value and wealth generation has moved from tangible to intangible assets. Intangible assets as recognised to be intellectual property are nothing less than potent weapons in the age of global competition. Intellectual property rights are not mere legal instruments but are tools of business. Thus, the area of management of intellectual property rights (IPRs) has great significance in the present world of explosive technological developments. With the rapid growth in diversified fields of technology, with the new scientific inventions and innovations, IPR protection and IPR exploitation is the key to commercialisation for any organisation. There is no doubt that the success in the smart phone industry is completely based on innovations. Some of the leading examples of success stories like software—Microsoft, hardware—Dell, and formulations—Coca-Cola are substantiating the fact that managing intangible asset can take any organisation on the path of success.

What is IP management

Management of IP includes the entire process of identifying, acquiring and protecting intellectual property of the organisation for the purpose of value and wealth generation.

Need for strategic management of IP

Strategic management of intellectual property for any organisation fosters creativity and innovation leading to generation of IP with potential for value extraction. It facilitates licensing and technology transfer of IP as well. It further leads to enhancing in-house competencies in understanding, identifying, generating, protecting, sharing and transferring IP. Strategic management of IP also helps prevent any unethical acts to avoid IP infringement at all levels and develop guidelines and facilitates IP sharing in joint development and collaborative projects with third parties. It helps the organisation maintain competitive edge.

Strategies to manage IP

Strategic management of intellectual property is needed at all stages starting from concept to commercialisation. Managing an IP portfolio is not merely acquiring a formal recognition of type of intellectual property right through a certificate of registration issued by the national IP office. IP management encompasses all IP rights including patents, designs, trade marks, copyrights, semiconductor integrated circuits layout designs, software programs, industrial designs, logos, confidential information, drawings, source codes, technical information, and any other knowledge/know-how created by the employees and affiliates of the organisation.[2] Strategic IP management impacts opportunity exploitation and the utilisation of existing resources. In order to support opportunity exploitation activities, IP management must ensure freedom to operate within a certain domain, for example a patent does not provide the patent-holder freedom to operate; exclusive rights related to necessary complementary resources can be held by other agents restricting and blocking the freedom to operate, possibly leading to hold-up problems and tragedies of the anticommons.[3] Further it can also be said that strategic IP management impacts opportunity exploration and dynamic capabilities. An example is the use of Frand requirements in some standards, meaning that participants must agree to licence out their essential patents to fair, reasonable, and non-discriminatory (Frand) licensing terms. A “tight” appropriability regime is then not necessarily most conducive for dynamic competitiveness, especially not if widening the scope from the firm perspective to the perspective of innovation networks and technological ecosystems. Strategic IP management can thus be used to proactively ensure accessibility to innovations, in order to promote cumulative innovation under certain conditions.[4]

Identifying IP.— Under the wide-ranging head of intellectual property rights, various forms of innovations are protected as patents, trade marks, copyrights, industrial designs, trade secrets and many more. The identification of IP is not a simple exercise. Hence, it is important for an organisation to carefully consider the importance of IP to its operations before embarking on what may be a fruitless and costly journey. Therefore following issues have to be addressed while identifying an IP that a company owns are as follows:

(i) Selecting a company name, domain name and trademark.

(ii) Identifying your products or services.

(iii) Determining which of your products and services can be protected as IP.

(iv) Distinguishing what type of IP protection applies to each of your products and services.[5]

Acquiring.— Considering the potential of value and wealth generation, IP assets should also be considered from a long-term point of view. Hence acquiring IP includes managing the chain of title to company-developed IP.

Monitoring.— It has to be done of the internal and external use of IP. All types of IP portfolio has to be systematically monitored. Once IP rights are acquired, one must take more steps to enforce those IP rights; if you do not, then there is no consequence to a potential infringer.

Commercialising.—When it comes to transfer technology from research organisations (ROs) to the business sector or to manage the intangible assets in small and medium-sized enterprises (SMEs), the intellectual property (IP) commercialisation practice is a key factor. Commercialisation is therefore the process of bringing the IP to the market in order for it to be exploited in return of business profits and growth. The financial success of any IP commercialisation will certainly depend on the choice of the most appropriate commercial tool.

IP commercialisation: The Unidyne case[6]

Unidyne Energy Environment Systems, a company engaged in manufacturing various insdustrial thermal energy systems. In 1999, Unidyne signed a memorandum of understanding (MoU) with Indian Inventor, Dr Milind Rane, who developed the design of matrix heat recovery unit (MHRU). This invention was used for recovering heat from hot gases and/or vapors from engines, boilers or furnaces. Unidyne saw value in the patent application, which was still not granted the status of a patent by the patents office. Dr Rane, through the MoU licensed his technology to Unidyne to manufacture and sell MHRUs. The patent was granted in 2004 and is now being used by more than 45 companies in India. For Unidyne, the agreement act as a tool to boost its product.

                                                                  Figure 1: Common forms of IP commercialisation[7]

Intellectual property is outcome of knowledge and creativity. It is foundation for evolution and progress in each and every sphere of human accomplishments. Moreover in the age of information technology, intellectual property rights and intangible assets are gaining significant importance. Businesses cannot ignore the developments in the intellectual property regime. Intellectual property rights and intangible assets represent a major portion of the assets of a business, thereby constituting a large share of its value. Managers must be equipped with the necessary understanding of the tools and techniques that help them to protect innovations of the business, the creative works surrounding these innovations, the look, feel and design of the products as well as brands which generate value to the business. The national IPR policy also emphasises the need for a strategic perspective in managing intellectual property and has put in place a lot of measures to facilitate the “mind to market” among the MSMEs and other industries. There is an evident urgency in implementing an effective IPR policy within organisations in order to achieve its overall strategic intent.

*Vaishali Singh is Research Associate, GNLU-Microsoft IPR Chair, Gujarat National Law University.

[1] Jain, Karuna, Intellectual Property Management System: An Organisational Perspective, Journal of Intellectual Property Rights (2006), pp. 330-333.

[2] See William W. Fisher III & Felix Oberholzer-Gee, Strategic Management of Intellectual Property: An Integrated Approach, California Management Review (2013) 55 CMR.BERKELEY.EDU, available at <http://www.hbs.edu/faculty/Publication%20Files/CMR5504_10_Fisher_III_7bbf941f-fe1b-4069-a609-9c6cd9a8783b.pdf> (last accessed on 21-11-2017).

[3] See Holgersson Marcus, Innovation and Intellectual Property: Strategic IP Management and Economics of Technology, available at: <http://ssrn.com/abstract=2563297> (last accessed on 1-12-2017).

[4] Ibid.

[5] See MaRS Entrepreneur Workbooks, Identifying your intellectual property, available at: <https://www.marsdd.com/wp-content/uploads/2010/12/Identifying-Your-Intellectual-Property-WorkbookGuide.pdf> (last accessed on 1-12-2017).

[6] Bandyopadhyay, T.K., “Introduction on Intellectual Property to Engineers and Technologists”, available at: <http://textofvideo.nptel.ac.in/109105112/lec40.pdf>. See also <http://www.unidyne-energy.com/> (last accessed on 23-11-2017).

[7] See <http://ship.mrc.ac.za/invention.htm>.