Others

SpicyIP Weekly Review (April 27 – May 3)


(This post has been authored by our intern, Bhavik Shukla, a 5th year student at NLIU, Bhopal)

Topical Highlight

Divij covered the legal aspects surrounding digital access to libraries with reference to the COVID-19 lockdown. He notes that the legality of digital book-lending efforts have posed unresolved challenges to the copyright law in India. He notes that Indian copyright law incorporates the first sale doctrine, but the same has not been extended to the digital medium due to the ease of a work’s reproduction in such medium. He suggests that the lending model adopted by libraries will play a major role in deciding the question of digital copyright exhaustion under Indian law. In respect of the fair use defence under section 52, he notes: first, that libraries lending digitally may rely on section 52(1)(a)(i) which permits ‘private or personal use, for research’. Second, he states that the determination of fair use is dependent upon numerous factors, which enables reliance on the argument of ‘digital access’ in times of such emergency. Third, he argues that educational institutions may rely upon section 52(1)(i) to reproduce works ‘in the course of instruction’.

Thematic Highlight

Dr. Arul George Scaria discussed the US Supreme Court’s decision in the case of Georgia et al. v. Public.Resource.Org, where it was held that annotations to the official code of Georgia are not copyrightable. He states that the majority of the Court agreed with the application of the government edicts doctrine, noting that judges and legislators could not be considered as ‘authors’ of works produced in course of their official duties. Subsequently, he proposes the extension of the doctrine to facilitate ‘access to law’ in India. First, he notes that the adoption of the doctrine by the judiciary may enable free access to statutes. Second, he states that the doctrine may be used to conclude that any edits or annotations to judgments are not copyrightable. Third, he notes that the adoption of the doctrine may enable free access to legal standards in India.

Other Posts

In a guest post, Neha Mishra wrote about cross-border data flows under WTO law. She states that specific policy objectives enshrined in the WTO law enable governments to restrict cross-border data flows, but require balancing of the principles of trade liberalization and domestic laws concerning internet. However, she observes that such balancing requires a re-orientation of the existing international trade rules, keeping central the principles of ‘internet openness’, ‘internet privacy’ and ‘internet security’. She further suggests that the WTO tribunals should attempt at aligning GATS rules with the three aforementioned principles, while attempting to distinguish specific policy objectives from those which are merely protectionist measures. She warns that such alignment may be stilted due to the general lack of consensus on internet policy issues and the outdated architecture of GATS, and she subsequently suggests certain measures to address these inadequacies. She concludes by noting that it is imperative for countries to hold negotiations to ensure reduction of trade restrictions in data-driven sectors.

A guest post by Kapil Wadhwa espoused a different statutory interpretation to the provisions on sub-licensing of trademarks. First, he deals with permitted use of a registered trademark, under which he observes that it is not compulsory for the parties to record a licence agreement with the Trade Marks Registry. Noting the requirements to be fulfilled for registration of a registered user, he observes that neither the Act provides for a format of such an agreement, nor does it restrict the inclusion of a sub-licensee in the agreement. He further explains that sub-licensing of a mark is also possible by way of ‘consent’ granted to a third party through an unregistered licence. Second, he notes that permitted use of an unregistered trademark is not prohibited by the Act, and accordingly common law licensing may also include a sub-licensee. He states that the recognition of common law licensing in India prevents the unfair misuse or exploitation of the licensor’s mark by either the licensee or the sub-licensing.

Swaraj reported on the submissions made by certain organizations to the USTR for the Special 301 Report. First, he covers the submission of the Intellectual Property Owners Association (IPO), where it claims Indian policies to stimulate compulsory licensing. Further, he notes that the IPO’s submission also points out the inconsistencies in patent examinations in India, drawing a correlation between the experience of examiners and inconsistencies in examinations. Second, he covers the submission of the Pharmaceutical Research and Manufacturers of America (PhRMA), wherein he states that the IP concerns raised by them are the usual ones raised annually, relating to compulsory licensing, section 3(d), patent linkage etc. Third, he briefly covers the submission of Biotechnology Innovation Organization (BIO), which aggressively claims India to be classified as ‘Out-of-Cycle Review’. He further notes that BIO’s submission claims for patenting of plants, and raises concerns in respect of counterfeit drugs. He concludes by noting that the current pandemic has the potential to offer public-health concerns a centre stage vis-à-vis IP rights.

Other Developments

India

Judgments

Jaju Tobacco Company and Another v. R.K. Patel and Company and Others – Bombay High Court [April 30, 2020]

The dispute between the Parties arose on account of the Appellants’ alleged infringement of the Respondents’ yellow coloured packaging by adopting an identical colour scheme. The Trial Court granted an interim injunction restraining the Appellants’ from using the yellow coloured packaging for its products. In the appeal, the Court examined the packaging of the Parties and noted that the pouches were of the same size, and contained similar colour scheme and design. Moreover, the Court observed that there was a strong likelihood of confusion as the class of consumers of raw tobacco mostly purchase it based on the combination of colours on the packaging. The Court stated that all the three elements in respect of the grant of an injunction were fulfilled as the Appellants used the essential features of the Respondents’ packaging, and due to the existence of a strong likelihood of confusion among the consumers. In light of the aforementioned discussion, the Court noted that there was no reason to interfere with the Trial Court’s order and accordingly dismissed the appeal.

News

  • Researchers from Shiv Nadar University in Uttar Pradesh file for a patent for new chemical entities having potential to cure acute respiratory distress syndrome (ARDS) caused by coronavirus infection.
  • IIT Roorkee Professor files for a patent for a software which detects the presence of COVID-19 in patients within 5 seconds using X-ray scan.
  • MRPA Corporation files for a patent for an injection which aims to strengthen the immune system of COVID-19 patients.
  • Jawaharlal Nehru Tropical Botanical Garden and Research Institute files for a patent for a plant extraction’s effective anti-virus property, which is dubbed to fight COVID-19.
  • BananaIP announces that it will file free patent applications for inventors who adopt the Open COVID pledge.
  • Government plans to not compulsorily licence Remdesivir; hopes for voluntary licensing by Gilead.
  • Justice Pratibha Singh of the Delhi HC, in a piece in The Hindu, argues for the urgent need for creation of a patent pool to tackle COVID-19.
  • The IP Office announces a three year extension of the Scheme for Facilitating Start-ups Intellectual Property Protection till 31 March 2023.

International

  • Israeli Patent Commissioner announces accelerated examination of patent applications concerned with tackling COVID-19.
  • The South Korean Intellectual Property Office offers COVID-19 related patent information uploaded on its website in English.
  • Tiziana Life Sciences files for a patent for a combination of an antiviral drug and an anti-inflammatory agent believed to provide immediate relief to patients suffering from a severe case of COVID-19.
  • United Arab Emirates grants a patent for an innovative process to cure COVID-19, which involves extraction and re-introduction of patient’s stem cells through lungs.
  • USPTO rules that Artificial Intelligence cannot be inventors; only ‘natural persons’ are eligible for a patent.
  • US Navy Lab offers royalty-free patent licence agreements to companies intending to battle COVID-19.
  • USPTO issues a patent to Enzo Biochem, Incorporation for its compound which prevents inflammation in COVID-19 patients.
  • Gilead claims that it is ready to collaborate with governments and pharma companies, and ready to even consider proposals of pooling its patent to provide access to its patented drug, Remdesivir touted to treat COVID-19.
  • The Beijing Treaty on Audio-visual Performances comes into force in China, and aims to increase performance-related rights of artists.
  • English High Court holds Sky plc’s trademarks partly invalid on the ground of bad faith.

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