SpicyIP Weekly Review (May 22-29)

SpicyIP Highlight of the Week

Our highlight of the week undoubtedly has to be Prof. Basheer’s two-part analysis of the decision of Deputy Controller, Rajesh Dixit, overruling all the objections to the grant of a patent to Gilead for Sovaldi.

In the first post, Prof. Basheer notes how the Deputy Controller erroneously conflated the ‘novelty’ and ‘inventive step’ enquiries while assessing Gilead’s application and came to the conclusion that the production of Sovaldi involved an inventive step by applying the principles that help determine novelty. Further, he points out the key flaws in the Deputy Controller’s Section 3(d) analysis, noting how he shifted the burden of proof to the opponent and did not offer any cogent reasons for holding that Merck’s known substance was imaginary. In the second post, Prof. Basheer discussed some fascinating questions that the patent infringement suit filed by Merck against Gilead in the United States is likely to throw up. More specifically, in light of the fact that Gilead is challenging the validity of Merck’s patent in the U.S. on the ground that it was built upon confidential information, prof. Basheer talks about the possible impact that a determination in Gilead’s favour in the U.S. could have on Merck’s prior art claim as regards Sovaldi in India.

In the first post of this week, Shruthi informed us that a new round of registration has commenced for FICCI’s online course on intellectual property law and practice called IPComp. You can find out more about the course here. Please note that the last date of registration is May 31st; don’t forget to mention SpicyIP as the source of the information in case you decide to register for the course.

Next, Shan brought us an interesting update about the Bombay High Court’s interim order restraining a Belgaum-based restaurant named Blu Frog from infringing on the trademark of the Mumbai-based restaurant named Blue Frog. After succinctly analyzing the reasoning advanced by Justice Patel in favour of the order, she situated the order within a broader context, by discussing parallel instances of prominent restaurants, such as Burger King, Karim’s and Café Madras, successfully prohibiting other restaurants from using their trademarks. Finally, she alluded to some prominent international trademark disputes in the hospitality industry.

Thereafter, Shruthi apprised us of a fascinating lecture that was to be delivered by Prof. Shubha Ghosh at NLU Delhi on May 26th titled ‘Free Speech and Free Markets: The View from Intellectual Property’.

Next, Kartik put up a post containing the details of Consilience 2016 that was held at NLS Bangalore over this weekend. I hope that many of you were able to attend the conference!

In this week’s next post, Ritvik analyzed observations germane to India in the U.S. Trade Representative’s 2016 Special 301 Report on IP Protection and Enforcement. After examining the statutory basis for the report, he delved into a substantive analysis of the Report’s observations with respect to 3 key issues: Section 3(d)’s requirement of showing an enhanced layer of efficacy; the manner in which compulsory licensing provisions are being enforced; and the need for patentees to comply with local working requirements. After examining the key takeaways for India, he finally examines how India seems to have begun caving in to US pressure.

Next, Professor Basheer noted that the IPAB has been without a chairman for the last fortnight after the superannuation of Justice Basha. After examining the negative ramifications that this development has had, he pointed out that Justice Manmohan Singh of the Delhi High Court has a high likelihood of replacing Justice Basha. After having read some of Justice Singh’s judgments, I can safely say that this would be a welcome development if it actually comes to pass.

In this week’s final post, Shan offered a brief analysis of a letter written by 15 Democrats to the U.S. Trade Representative, expressing concerns about recent news reports that American officials have discouraged Colombian officials from issuing a compulsory license for Novartis’ cancer medicine, Gleevec. She notes that American officials have essentially made monetary support under a peace deal between the U.S. and Colombia contingent upon Colombia’s assurance not to grant a compulsory license and points out that the stance of the 15 Democrats bodes well for developing countries such as ours.

International developments:

1. A U.S. jury ruled in Google’s favour in its long-standing legal battle with Oracle, holding that the former’s use of Oracle’s Java Development Platform for developing Android fell within the ambit of the fair use doctrine.
2. Casey Dienel, an indie pop singer, has sued Justin Bieber for copyright infringement, contending that the latter’s song, Sorry, contains a vocal riff that has been lifted from the former’s song called “Ring the Bell.”
3. Huawei has filed patent infringement lawsuits against Samsung in the United States and China, contending that the latter has borrowed the former’s 4g cellular communication technology, operating system and user interface software.
4. Motorola has registered the Moto Z trademark with the U.S. Patent and Trademark Office (USPTO).

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