As a part of the ‘SpicyIP Open Government’ project, I recently picked up, under the RTI Act, some documents from the DIPP files on the internal deliberations of the Indian Government on the Patent (Amendment) Act, 2005. Before I continue any further I would like to publicly acknowledge the absolutely fantastic co-operation that I received from Ms. Chandni Raina, Director, DIPP and also the Central Public Information Officers along with Mr. Ram Chander, the IT Officer and Mr. Singh who was responsible for maintaining the files in an absolutely meticulous manner. (Image from here)One of the interesting documents that I came across in the official file on the ‘Amendments’ is a 5 page letter dated 1st February, 2005 from India’s Ambassador to Geneva, Mr. H.S. Puri, to the Joint Secretary of the DIPP. (Available over here) The letter in itself is remarkably sophisticated and Ambassador Puri’s understanding of the relevant issues of the forthcoming amendments was quite extraordinary. Do keep in mind that this letter is over 6 years old, at a time when there wasn’t much awareness amongst the Indian polity on any of the issues relating to TRIPs and Indian law.
The topic of the discussion of this particular letter was an editorial in the New York Times (NYT) criticizing India’s patent ordinance, which had been hurriedly enacted as a stop-gap measure to meet the December 31st 2004 deadline for India to become TRIPs compliant. The Ordinance was subsequently repealed when Parliament enacted the Patent (Amendment) Act, 2005 a few months later.
In his letter Ambassador Puri informs the Joint Secretary of the DIPP that “Criticism of the Ordinance by what is unarguably the most influential western newspaper – the New York Times – has to be taken seriously.” The NY Times editorial titled ‘India’s Choice’, which is available over here, dated, January 18th 2005, had slammed the Ordinance for so being “heavily influenced” by “multinational and Indian drug makers” that it did “not even take advantage of rights countries enjoy under the W.T.O. to protect public health”. (Amusingly the ToI reported that the NYT had ‘hailed’ the ordinance.) The editorial then goes on to explain four specific issues which needed further amendments. The first issue was that of compulsory licences where the NYT urged India to simplify its CL process to allow production to start before giving the patentee a right to be heard. In my opinion adopting such a recommendation would have been violative of TRIPs because TRIPs does require the patentee to be afforded a chance to be heard unless there was a national emergency. The second issue pertained to the implementation of the Doha Declaration which allowed for the export of patented pharmaceutical drugs to countries which did not have domestic production facilities.
The third and fourth issues dealt with the alleged curbs on pre-grant opposition mechanisms and the issue of ‘ever-greening’ of pharmaceutical patents. In his letter the Ambassador discusses all of these issues in considerable detail. I’ll limit this post to only the last two issues.
(i) On the pre-grant opposition mechanism: Up until the year 2005, India followed a pre grant opposition mechanism which is similar to the opposition mechanism under the present Trade Marks Act, 1999 i.e. the patent office would examine the patent application and if it was proceeding with the grant of the application it would advertise the same for three months, within which time any interested person could file an opposition against the patent application. If an opposition was successful, the patent application would be rejected, if not it would proceed to be sealed as a granted patent. The Patent Ordinance, 2004 had amended this provision to allow for only a pre-grant ‘representation’ while the ‘right to oppose’ was shifted to the post-grant stage. This was possibly done because patentees have always complained about the pre-grant opposition indefinitely postponing the grant of patents.
In his letter Ambassador Puri reflects on the objections of the NYT to this amendment. The primary objection was on the grounds that the provisions pertaining to the pre-grant opposition mechanism laid out in the ordinance were cursory unlike the provisions on the post-grant opposition which were detailed. In particular he objected to the fact that the pre-grant opposition mechanism vested too much discretion with the Controller and that these provisions did not provide for a right to be heard at the pre-grant stage. Ambassador Puri was bang on target with his analysis since this provision caused substantial litigation leading up to the Valcyte case where the Madras High Court finally held that the pre-grant opposition provides a right to be heard to all parties opposing the patent application.
(ii) On ‘ever greening’ of pharma patents: The final comments in the NYT Editorial and the letter from the Ambassador were reserved for the juiciest topics – ‘ever-greening’. While the NYT complained about the Ordinance being ‘uncomfortably vague’ on ‘ever-greening’, Ambassador Puri called for the Government to use this opportunity to initiate a Parliamentary debate on the patentability standards that India would like to follow, especially in light of negotiations on treaties like the SPLT. Most interestingly however the Ambassador states “A clear stipulation prohibiting the patenting of different salts, hydrates, isomers, metabolites, and polymorphs, would prevent our patent system being tied up endlessly by litigation on grounds of patentability.” As we all know this provision was eventually incorporated into the ‘explanation’ of what is now known as Section 3(d).
The Joint-Secretary of the DIPP did reply to the Ambassador in a 2 page letter attempting to clarify the issues raised in the NYT editorial. I don’t think he did a very convincing job.
Dear Prashant ,
It will be also very interesting to note what the Joint Secretary wrote to the the Ambassador.So please highlight that also.
IP Reader
Dear IP Reader,
I’ve mentioned it in the last two lines. His letter however is not really news-worthy. Its pretty bland.
Cheers,
Prashant
Prashant,
I read through the Letter from Ambassador Singh and was honestly amazed at the clarity of thought that the man had before the Pandora’s box opened and honestly was appalled at what DIPP response is _ I think the last 2 page pdf file show the apparent grasp of the patent matters within DIPP.
Taking this forward:
a) How many of the concerns raised have become a problem/ hurdle?
For e.g. the pre-grant representation has effectively become full fledged pre-grant opposition with inter-parte hearing.
b) Would love if you put up more of these Govt documents on the Site. You folks earlier put up the Ayyangar Report and that was very nice. Later, I recall Shamnad wanted the Parliamentary report and had put up a request for the same on SpicyIP… Do put up the same as well.
Regards,
Watcher
Hi Watcher,
I’m completely agree with your assessment of the Ambassador’s letter and the response to it.
We’re working on putting up some more papers on the website this week. Some of it makes for some very interesting reading.
As for these reports etc. I would urge all our readers to contribute as much as possible. If you’re in Delhi, please do take out the time to go to library photocopy/scan some of the relevant papers and send it to us so that we can host it on the website.
Best,
Prashant
Dear Prashant,
It is nice to hear that you got absolutely fantastic co-operation that you received from Ms. Chandni Raina, Director, DIPP and also the Central Public Information Officers along with Mr. Ram Chander, the IT Officer and Mr. Singh who was responsible for maintaining the files in an absolutely meticulous manner. In fact his is what is required.
I had the occasion to deal with the FPO office whereby I wanted to know the information about some firm registered with the department. Not only they gave the information within 10 days but also were willing to co-operate by discussing the issue. Some information which was supplemental to the RTI application, was immediately given thinking that in any case the information called for was genuinely required and that if I file another RTI they will in any case have to give me. Hence they co-operated without my supplemental RTI application.
BUT I have very bad experience in Trade Mark Office. I hear that TM Office becomes vindictive of the person who files RTI application, do not reply the same in time or do not reply at all. The appeal before the First Appellate Authority brings no fruit (this is what I read by some of your readers in your blog), the First Appellate Authority would give the reason that he CPIO was not able to give the information due to administrative reasons and that the CPIO has been requested/directed to give the information AND the APIO would not bother about the said order/request/direction. It has gone to the extent that a second appeal is stated to have been filed by one Mr. K. K. Arora with CIC who imposed fine of Rs25000/- on CPIO to be deducted from her salary @Rs5000/- per month. The said order has been challenged with the Hon’ble Delhi High Court by way of a Writ, wherein the order has been stayed (even though the amount of total of Rs10000/- has already been deducted in the meantime from the salary of CPIO @Rs5000/- for two months).
I hear that there are many more applications pending where no information has been given and the First Appellate Authority has done the same thing. I also read that the opinion of the CPIO of TM office Delhi is that the lawyers are not entitled to information under RTI Act. Is that correct?
Keen Follower of spicy.
Dear ‘Keen Follower of SpicyIP’,
I’ve had little experience of filing RTIs with the Trade Mark Office and hence am in position to comment. But I’m guessing that given the number of missing files at the TMR, the job of the CPIO must be pretty difficult.
In any case I think the Government should really begin to train the CPIOs because a lot of them just do not understand the Act.
My experience with the Copyright Office has been awful. Half-information, no information, flouting the 30 days rules on the house. There is no stopping these chaps.
Best,
Prashant
Prashant,
while I completely want to be a part of the transparency campaign, unfortunately, am not in Delhi and so have no access to the papers which are usually maintained in the various Govt archives at Delhi.
Keep up the good work.
Watcher
I happen to see this blog now. It has been learnt that there is yet another order of 24th Nov, 2011 of CIC against the same CPIO where the disciplinary proceedings have been recommended under Section 20(2) of the RTI Act on account of persistently refusing to give information called for by citizenery. The Controller General has been directed to initiate the disciplinary action.
This action of CIC seems that because the same CPIO was imposed with fine of Rs25000/- to be deducted from her salary @ Rs.5000/- per month and even the amount of Rs5000/- has been deducted from her salary for two months, the Hon’ble Delhi High Court was pleased to stay the operation of the order. This seems to have been the reason for recommending for Disciplinary action instead of imposing the fine, as she perhaps would have again approached the Delhi High Court for stay of the order.