Image from here.
Continuing our Sifting Through SpicyIP Pages series, this post dives into September’s pages and sheds light on some stories, their evolution, or sometimes, their stagnation. In the past, much like intrepid time travelers, we journeyed through the months of June, July, and August, uncovering how some stories like the Mashelkar Report, the National Biotechnology Regulatory Authority (NBRA) Bill, the Whistleblower Act, or the Indian “Bayh Dole” Bill, unfolded with time. Without further ado, here’s what I found in Septembers:
(If you have missed the previous posts of this series or want to follow it, please check SpicyIP Flashbacks!)
Whither Draft Indian Innovation (NIA) Act: Around 15 years ago, in the same month, Prof. Basheer shared the news of the announcement of an Indian Innovation Act, as the then Minister of Science and Technology called it. Later, when the first draft was released, it was called the National Innovation Act (NIA), 2008. Said to have been inspired by the American COMPETES Act, 2007, the draft Act was to “facilitate public, private or public-private partnership initiatives for building an Innovation support system to encourage Innovation ….” Endeavors with similar objectives have been made earlier as well, e.g., through the Public Funded Research and Development (Protection, Utilisation and Regulation of Intellectual Property) Bill, 2007 aka Indian Bayh Dole Act. More recently, Swaraj wrote about Bayh Dole-esque Guidelines notified by Dept of Biotechnology. Here, Prashant and Saranya’s post suggesting that India has Spent Rs. 1,00,000 crores on Scientific Research Over the Last Decade with no transparency and calling for reviving discussions around an Indian ‘Bayh Dole’ bill also needs highlighting.
Coming back to NIA, among other things, the NIA Act also became known for its objective to codify and consolidate the law of confidentiality and trade secrets – something for which there is no specific law in India. Mihir Naniwadekar discussed the issue here through his two-part post – here and here. I think it was the first (and only?) draft Act that attempted to codify trade secret law. (Please correct me if I am wrong.) However, since the draft was never tabled in the parliament, it never saw the day of actual discussion, let alone enactment and implementation. Recently, in the 161st report of the Parliamentary Standing Committee Report on Review of the IPR regime in India, there came a suggestion of making a separate law for trade secrets in India. Maybe, we will see a day in the future when this unmade legislation will be revisited. Until then, this will remain one of those unmade laws in India, lingering as a promising but unfulfilled endeavor in the country’s legal landscape.
When IPO made the TM database Open: Thirteen years ago, the Indian TM database became openly accessible, a significant step towards transparency and ease of access, as highlighted by Sumathi Chandrasekharan. Yes … the current level of accessibility wasn’t always the case in the IP domain neither in trademark nor in patent domain! In fact, the Registry used to generate a sum of around 4 crores INR, from trademark searches before embracing public access. Despite these advancements, the efficiency of the database (or the larger issue of transparency in the administration of IP institutions) has remained a consternating concern, often leaving practitioners dissatisfied. Whether it’s the IPAB website or the Indian patent website, the recurrent issue of non-functional platforms doesn’t surprise us anymore. The recent public notice by CGPDTM limiting access to trademark public search and E-Registry features for indefinite time serves as a reminder that challenges persist, necessitating continual enhancements and the resolution of systemic issues.
Patent Agent and the Dubious Dichotomy of Science vs Law: The issue of/around Patent agents and their qualifying examinations has been extensively discussed on the blog. One pertinent post on this subject was from this month in 2010 called the Patent Eligibility and the Logic of Law and Science. In the post, Prof. Basheer endorsed the point about testing patent agents on foundational legal subjects since a good part of patent prosecution will involve “legal” aspects, without requiring them to have a law degree to take the exam. Drawing ideas from previous posts like “Is it Unconstitutional for the Patent Office to be the Adjudicatory Authority deciding Oppositions & CL proceedings?”, the post followed the discussion on Patent Competence which brooded some broader policy questions around the qualification of patent officials at IPO. Among other questions, the post asked if the prospective Officers to the Indian Patent Office (IPO) – an issue that arose at that time — should be subjected to the patent agent exam and if they should know the Patents Act and Rules prior to being appointed. The topic was particularly pondered in a post called “Is “Science” Essential for Creating Patent Lawyers?” where Prof. Basheer categorically conceptualized the issue of the importance of “technical background” for patent practice. Fast forward to today, a law degree is not a requirement to become a patent agent nor are such agents required to be tested on fundamental legal subjects as recommended then. However, given the increasingly important role of patent agents in patent prosecution (see e.g. here), who are arguably out of the purview of any liability that advocates owe to their clients (as Prashant argued here), it is worth asking if the legal framework around patent agents needs revision.
Romanticising Innovation: In September 2010, Prof. Basheer penned a post called “Romanticising Innovation and Showcasing Reality” sharing the news of the launch of a reality TV show that aimed to identify innovative minds, who can solve the problems of the masses with their innovative ideas. The long-time readers of the blog would know that Romanticising Innovation is a theme that is very dear to the blog (particularly, see here). And why not? After all, IPRs are for fuelling innovation and driving progress. Aren’t they? Although it’s a different question that these terms have nowadays become fancy phrases thrown almost everywhere, with less discussion on what they mean. Over the years, although we couldn’t witness much (direct) discussion on the topic on the blog, discussion and work on the topic galore outside through conferences and awards ceremonies (e.g. through the ASEAN-India Grassroots Innovation Forum or Grassroots Innovations Accelerator program or Biennial National Grassroots Innovation and Outstanding Traditional Knowledge Awards of NIF). A few months ago, Aparajita shared the story of Navjot Sawhney who was awarded for his hand-cranked washing machines in the U.K. Interestingly, as Aparajita noted, Remya was also an innovator with a similar innovation who also got an award, though her innovation did not take off commercially. The upshot here is that – while the tales of Navjot, Remya, and other award winners deserve our applause and celebration, it’s equally important to remember that awards mainly serve as a nod to informal innovation. However, a well-conceived plan for their commercialization needs to be carved out.
Patent Opposition: Navigating SpicyIP’s September pages, I chanced upon a 2009 piece from Prof. Basheer discussing the study he conducted on opposition to pharmaceutical patent applications between 2005 and 2008 showing their abysmal number (3 % of the total applications filed!). As the research revealed, the majority of these oppositions relied on Section 3(d). The post asked why oppositions filed were so low, a question that remains relevant today and has become even more important, given the decreasing number of oppositions over the years – about 1.1% in 2020-21 and 0.69% in 2021-22 of the total published applications. (See the Annual Reports here) What appears to have worsened over the years is the availability of specific data on not only patent oppositions (as highlighted here) but other important areas like the information about applications filed in a specific sector/entities. For instance, earlier in the Annual Report for the year 2008-2009, details of the top 10 applicants in the pharma sector were also given. However, no such details about the pharma sector are provided anymore, as seen from the latest annual report here.
For context, there are two types of oppositions – pre-grant and post-grant – and both have their share of issues. While some courts emphasize the sanctity of the right to oppose the grant of a patent, others have refused to allow writ petitions when pre-grant oppositions are rejected. One critical aspect that often complicates the opposition system is the question of “who” can file it. The law is clear on this – “any person” can file a pre-grant opposition, while only “interested persons” can submit post-grant opposition. However, some courts have misinterpreted them, as Swaraj nicely argued here. Another issue that has long infested the opposition system, especially the post-grant one is the delays and indefinite timelines. In any case, the area demands more attention and deliberation given the not-so-reliable data available on this topic.
That’s a wrap for the sift of Septembers! Next stop: the perky pages of “October.” Did I miss any noteworthy posts or events or anything you think deserves mention? Please drop them in the comments. Until then, catch you next month!
Thanks to Praharsh for his input on the piece.