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Title: Innovation and intellectual property rights law – an overview of the

indian law

Author: Justice S. Ravindra Bhat

PII: S0970-3896(17)30586-4

DOI: https://doi.org/10.1016/j.iimb.2017.12.003

Reference: IIMB 276

To appear in: IIMB Management Review

Received date: 12-9-2016

Revised date: 11-5-2017

Accepted date: 6-12-2017

Please cite this article as: Justice S. Ravindra Bhat, Innovation and intellectual property rights

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https://doi.org/10.1016/j.iimb.2017.12.003.

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Innovation and Intellectual Property Rights law – An overview of the Indian law Justice S Ravindra Bhat ⃰ , High Court of Delhi, New Delhi, India ⃰ Corresponding author: Email address: sravibhat@gmail.com Telephone no.: 011 2338 3320 Short Title: Innovation and Intellectual Property Rights Law in India. Keywords: Innovation and Intellectual Property Rights law, Indian law, IPR, TRIPS, Patent law, Copyright law, Moral rights, Trademarks Abstract: The present article provides an overview of the various laws dealing with innovation and intellectual property rights in India. In India, the many facets of intellectual property rights are dealt in particular legislations enacted by the Parliament. These legislations operate within the overarching guarantee of the right to property provided by the Indian Constitution. While providing brief insights into the law of patents, copyrights, trademarks, designs, and remedies for violation of these rights, the article also covers questions relating to the inter-section of these rights in practice. Where appropriate, the article also refers to seminal judicial decisions on these areas of law.

Introduction

The Indian Constitution assures various fundamental rights such as the right to

life1 (expansively interpreted so as to include dignity, privacy, livelihood, right to shelter,

access to emergency healthcare and clean environment), the right to equality2 and non-

discrimination3 (on specific grounds such as gender, descent, race, caste, religion, etc.),

right to primary education,4 freedom of speech,5 association,6 movement and the right

to business, trade, commerce. 7 Property rights (subject to expropriation through

eminent domain, based on the determination of fair compensation) were deleted from

1Article 21, Constitution of India, 1950. See for instance, Kharak Singh v. State of Uttar

Pradesh, AIR 1963 SC1295, Francis Coralie v. Union Territory of Delhi, AIR 1981 SC

746, ParmanandaKatara v. Union of India, AIR 1989 SC 2039. 2Article 14, Constitution of India, 1950.

3Article 15, Constitution of India, 1950.

4Article 21A, Constitution of India, 1950.

5Article 19(1)(a), Constitution of India, 1950

6Article 19(1)(c), Constitution of India, 1950.

7Article 19(1)(g), Constitution of India, 1950.

Page 1 of 24

the Chapter on Fundamental Rights of the Constitution in 1978; they are now relegated

to another place. Nevertheless, the Supreme Court in the K.T. Plantation (2011) ruling8

holds that intellectual property enjoys a high degree of protection (“The expression

`Property' in Art.300A confined not to land alone, it includes intangibles like copyrights

and other intellectual property and embraces every possible interest recognized by

law”).

It would be also necessary to note that Indian Courts take into consideration Part

IV of the Constitution, which enacts the Directive Principles of State Policy, wherever

issues of legislative interpretation that impinge upon the rights of a cross-section of

people arise. Articles 39 (e) and (f) enact concerns relating to health which Indian

legislatures have to recognize, in their laws. The courts have not un-often recognised

that while it is imperative to give full effect to the rights of IPR owners, equally the law

plays an important role in balancing the public interest between the property rights of

the IPR owner and the public interest in permitting creativity and innovation:9

“From jurisprudential point of view, intellectual property rights work as a two way sword. On the one hand, there is a growing awareness that such protection is a sine-qua-non of the motivational factor underlying the creation of an intellectual work; however, on the other hand, granting an absolute protection to the intellectual work can be detrimental to the further progress of humanity. In order to balance the rights of the author on the one hand and the society on the other hand certain limitations have been made a part and parcel of the IPR statutes around the globe. In the realm of copyright laws, one of the more important limitations is the doctrine of “fair use.” This doctrine of Fair dealing/Fair use is a limitation and exception to the exclusive right granted by copyright law to the author of a creative work and it allows limited use of copyrighted material without acquiring permission from the rights holders.”

Unlike in other countries, the Indian Constitution compels national legislation, to

embody the terms of a treaty, for it to be enforceable in courts in India.10Treaties are

per se unenforceable in courts, but are to be incorporated through national legislation.

The Supreme Court of India, in the area of human rights –especially in respect to

personal liberty, often iterated that to the extent provision of any treaty is in

consonance with the Constitution (such as Article 21), it would be read along with such

8K.T. Plantations v. State of Karnataka 2011 (9) SCC 01

9Syndicate of the Press of Cambridge University v. B.D. Bhandari(2011 Division Bench,

Delhi High Court) 10

Article 253, Constitution of India, 1950

Page 2 of 24

provision or right.11Courts therefore, are bound to interpret and follow the law on the

specific subject, in India. If it is clear and unambiguous, no question of resorting to

external sources arises. The qualification is that if the terms of such treaties are similar

to the law applicable in India, courts may consider foreign judicial precedents in that

regard; however those are of persuasive value. This the Supreme Court recognised, in its

Entertainment Network ruling in 2008 in a dispute relating to copyright.12 At the same

time, when there are national law embodying international conventions, or treaties, the

courts do take into consideration their provisions, rulings of foreign courts in the area,

and so on.13 In an unusual case, the Madras High Court had to decide whether the

enactment of a provision in the Patents Act infringed provisions of the Trade-Related

Aspects of Intellectual Property Rights (“TRIPS”).14 The holding was arguendo, if the

enacted provisions did violate TRIPS, the court ruled that it lacked capacity to determine

and grant the relief, as it could not direct the Indian Parliament to enact a law. Given the

dualist nature of the Indian legal system and its relation to international obligations

undertaken by the government, courts in India do not have the competence to

pronounce on possible treaty violations, in the face of domestic legislations covering the

issue. Hence, even if the some provisions of the Patents Act violated India’s

commitments under the TRIPS, the only remedy available would be the amendment or

re-enactment of the law by the Parliament. This would mean that the responsibility of

ensuring that the laws in India are compatible with the international obligations under

TRIPS would be on the Parliament. While the courts may adopt an interpretative

approach that could read the statute in harmony with the TRIPS, however where such

harmonious construction would not be possible, the obligation would fall on the

Parliament to suitably modify the law to make it TRIPS compliant.

Patent law

India had limited patent protection in specified fields rather than product patent

protection, particularly for food and pharmaceuticals, to highlight national issues such

as access to drugs and food security. Based on the German example of allowing only

process patents (which was subsequently followed by Austria, Brazil, Czechoslovakia,

Holland, Hungary, Japan, Mexico, Norway, Poland and the U.S.S.R.), a specially

11

Jolly George Varghese and Anr. v. The Bank of Cochin, AIR 1980 SC 470, Apparel

export Promotion Council v. A.K. Chopra, AIR 1999 SC 625; KubicDariusz v. Union of

India AIR 1990 SC 605. 12

Entertainment Network v. Super Cassette Industries Ltd. (2008) 13 SCC 30 13

Novartis AG v. Union of India & Others2013 (6) SCC 1 14

Novartis A.G. v/s Union of India (2007) 4 MLJ 1153

Page 3 of 24

constituted Committee recommended that restricting the grant of patents to processes

would significantly benefit the Indian chemical and pharmaceutical industry. Further, it

was necessary to deny product patents, especially for articles of food or medicine, as

they ought to be made available to the community at reasonable prices and cannot be

subject to monopoly. The Patents Act, 1970 was enacted based on the

recommendations of the Committee. India was among 50 other countries, pre-TRIPS,

that exempted pharmaceuticals from product patent protection and an additional 10

exempted pharmaceuticals from process patents as well. The Indian Patent Act of 1970

and other measures such as drug and industrial policies were tools to achieve its

national priorities. This system encouraged competitive innovation in the methods of

making known products and enabled production of products patented elsewhere using

different processes, incentivizing the development of more efficient production

processes. This system’s encouragement for process innovation was the first step to

establishing India’s generic drug industry, much similar to how Germany established its

chemical process industries in the 1800s. The term of process protection over food,

drug, and medical inventions was limited to five years. A license of right authorized any

person to manufacture a patented product, without having to seek the patentee’s

approval. Inventions relating to food, chemicals, and pharmaceuticals, were deemed

endorsed with a licence of right three years after the patent issues. The Patents Act was

amended thrice – in 1999, 2002 and 2005 after India’s entry to TRIPS. The 1999 Act,

given retrospective effect (from 1 January 1995) allowed15 patent claims for a substance

itself intended for use or capable of being used, as medicine or drug; and contained

provisions for grant of exclusive marketing rights in respect of pharmaceutical

substances for which patent was granted under Section 5. The 2002 amendment

redefined ‘invention’ to include a new product, and introduced the definitions of

‘capable of industrial application’ and ‘inventive step’. Perhaps, the most crucial of these

amendments was brought about in 2005, which permitted product patents for

pharmaceutical products. It was again through this amendment that the existing Section

3(d) of the Act was brought in. That provides for a check against the patent claims,

which do not disclose any significant enhancement in efficacy of a known substance.

This was the subject of discussion in the Novartis decision of the Supreme Court of India.

Further, the government could, in the public interest, compulsorily licence the patent if

the invention was either not reasonably priced or not worked to satisfy the reasonable

requirements of the public. In 2005, India aligned her laws to TRIPS obligations; thus,

process and product patents are granted now; the patent period is 20 years. Novelty or

“new invention” includes world-wide prior art. Likewise, India’s inventive step

15

Amended Section 5 of Patents Act, 1970. Now omitted.

Page 4 of 24

requirement requires that the “feature of an invention that involves technical advance

as compared to the existing knowledge or having economic significance or both and that

makes the invention not obvious to a person skilled in the art.”

Bishwanath Prasad Radhey Shyam16is the first substantive decision on patents in

India by the Supreme Court, which ruled upon three crucial propositions. Firstly, though

pre-existing law did not require industrial application for patentability, the Court held

that this has always been considered to be necessary by courts. “The foundation for this

judicial interpretation is to be found in the fact that Section 26(1)(f) of the 1911 Act

recognizes lack of utility as one of the grounds on which a patent can be revoked.”

Secondly, the Court clarified that “Prior public knowledge of the alleged invention which

would disqualify the grant of a patent can be by word of mouth or by publication

through books or other media”. Lastly, it was ruled that the appropriate test for

determining ‘inventive step’ was laid down by Salkond L.J. in Rado v. John Tye& Son Ltd.

(1967) R.P.C. 297 as: "Whether the alleged discovery lies so much out of the Track of

what was known before as not naturally to suggest itself to a person thinking on the

subject, it must not be the obvious or natural suggestion of what was previously known”.

In Monsanto,17 the Supreme Court dealt with what is prior art and ruled that “to

satisfy the requirement of being publicly known as used in clauses (e) and (f) of Sec.

64(1), it is not necessary that it should be widely used to the knowledge of the

consumer public. It is sufficient if it is known to the persons who are engaged in the

pursuit of knowledge of the patented product or process either as men of science or

men of commerce or consumers.”

Dimminaco AG18is an interesting case where the Calcutta High Court in this case

discussed and decided the following two crucial propositions; one, there is no statutory

bar to accept a manner of manufacture as patentable even if the end product contains a

living organism. Two, to determine whether the process of manufacture involved in the

invention ought to be patented or not, the vendibility test is applicable. “The said

vendibility test is satisfied if the invention results in the production of some vendible item

or it improves or restores former conditions of a vendible item or its effect is the

preservation and prevention from deterioration of some vendible product. In other

words, a vendible product means something, which can be passed on from one man to

another upon the transactions of purchase and sale”.

16

Bishwanath Prasad RadheyShyam v. Hindustan Metal Industries (1979) 2 SCC 511:

17

Monsanto Company v. Coramandal Indag Products (P) Ltd. (1986) 1 SCC 642 18

Dimminaco AG v. Controller of Patents & Designs – (decided on 15.01.2001 by the

Calcutta High Court). This was a case dealing with the interpretation of Section 2(1)(j) of

the Patents Act. Section 2(1)(j) provides “‘invention’ means a new product or process

involving an inventive step and capable of industrial application”.

Page 5 of 24

In F. Hoffmann-La Roche (Single judge)19a single judge of the Delhi High Court held

that publicity of the material is not the sole test to determine obviousness, and also

recognised the distinction between ‘obviousness’ and ‘anticipation’. The court ruled

that:

“…The test of obviousness cannot be that the material or formula was published, but that having regard to the existing state of prior art or the published material, was it possible to a normal but unimaginative person skilled in the art to discern the step on the basis of the general common knowledge of the art at the priority date. The other deciding factor is whether the differences between the prior art would, without knowledge of the alleged invention, constitute steps which could have been obvious to the skilled man or whether they required any degree of invention.”

The Madras High Court, in TVS Motor Co20 decided an important issue of

patent construction. The Court stated that the general rule in regard to the

construction of the validity of a patent is, that construction, which makes it valid

should be preferred rather than the construction, which rendered it invalid. It was

further held by the court that patent specification should intend to be read by a

person skilled in the relevant art but their construction is for the Court and to do so it

is necessary for the Court to be informed as to the meaning of the technical words

19

F. Hoffmann-La Roche v. Cipla, 2008 (37) PTC 71 (Del) (Single Judge). This case dealt

with the interpretation of Section 2(1)(j) read with Section 3(d) of the Patents Act.

Section 3(d) reads “the mere discovery of a new form of a known substance which does

not result in the enhancement of the known efficacy of that substance or the mere

discovery of any new property or new use for a known substance or of the mere use of a

known process, machine or apparatus unless such known process results in a new

product or employs at least one new reactant.”

20

TVS Motor Co. v. Bajaj Auto Ltd., 2009 (40) PTC 689 (Mad - DB). This case involved

the interpretation of Section 2(j), 2(ja) and 2(l) of the Patents Act.

Section 2(j) provides “'invention' means a new product or process involving an inventive

step and capable of industrial application”.

Section 2(ja) provides “‘inventive step’ means a feature of an invention that involves

technical advance as compared to the existing knowledge or having economic

significance or both and that makes the invention not obvious to a person skilled in the

art.”

Section 2(l) provides “‘new invention’ means any invention or technology which has not

been anticipated by publication in any document or used in the country or elsewhere in

the world before the date of filing of patent application with complete specification, that

is, the subject matter has not fallen in public domain or that it does not form part of the

state of the art.”

Page 6 of 24

and phrases and what was the common general knowledge, i.e., the knowledge that

the notional skilled man would have.

The last judgment of the Supreme Court in Novartis AG 21 dealt with

interpretation of Section 3(d). A patent for Imatinib in free base form (the Zimmerman

patent) was granted in the US in 1993. The application that was rejected in India was

forImatinibmesylate, specifically the beta crystalline form, a salt of the free base

disclosed in 1993. The Indian patent in question for Imatinib mesylate in betacrystalline

form (hereafter IMBCF) was filed in 1998 and claimed that the betacrystalline form was

a new product because of new and superior properties such as a better beneficial flow,

better thermodynamic stability and lower hygroscopicity. These properties allegedly

allowed, among other uses, for better processing and storage. The Novartis application

claimed that by starting with Imatinib in free baseform, they produced

Imatinibmesylate, and then produced the beta crystalline form of the salt Imatinib (a

polymorph). The application compared the beta crystalline form with the free base

Imatinib to say that ‘all the indicated inhibitory and pharmacological effects are also

found with the free base’. The patent office rejected the claim, relying on disclosure of

the 1993 patent; Novartis then appealed to the Supreme Court in its judgment dealt

with the requirement of Section 3(d) that the substance had to disclose enhanced

efficacy over the existing product, the court explained the position as follows:

“Efficacy means ‘the ability to produce a desired or intended result’. Hence, the test of efficacy in the context of section 3(d) would be different, depending upon the result the product under consideration is desired or intended to produce. In other words, the test of efficacy would depend upon the function, utility or the purpose of the product under consideration. Therefore, in the case of a medicine that claims to cure a disease, the test of efficacy can only be ‘therapeutic efficacy’. The question then arises, what would be the parameter of therapeutic efficacy and what are the advantages and benefits that may be taken into account for determining the enhancement of therapeutic efficacy?.... What is evident, therefore, is that not all advantageous or beneficial properties are relevant, but only such properties that directly relate to efficacy, which in case of medicine, [as seen above], is its therapeutic efficacy.”

Merck Sharp Dhome v.Glenmark(20-03-2015, Delhi High Court) was a decision

where the order of a single judge of the Delhi High Court declining temporary

injunction on a patent owner’s claim for infringement was upset. The Division Bench

approved the “Wands test” (named after In re Wands adopted in the US to determine

sufficiency (or “enablement”) of disclosure and may be helpfully seen here: (1) the

21

Novartis AG v. Union of India, 2013 (6) SCC 1.

Page 7 of 24

quantity of experimentation necessary, (2) the amount of direction or guidance

presented, (3) the presence or absence of working examples, (4) the nature of the

invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the

predictability or unpredictability of the art and (8) the breadth of the claims. The

other significant teaching in this decision is that Markush claims in pharmaceutical

products cannot be rejected. The court’s view was that a seemingly overbroad claim

should be seen in the context and not with a view to reject it. The court held that:

“Patents cannot be construed so broadly so as to risk granting the patentee an unduly broad monopoly, but equally, one must not construe them narrowly and risk allowing competitors pick the closest imitation and frustrate the monopoly… the question whether the suit patent sufficiently discloses a particular combination (out of the billions it claims to cover) may arise on a case to case basis, on considering whether the combination has a different use, action, function, chemical structure or value as to take it out of the coverage. For the limited issue in these interim hearings, the Court notes – without the benefit of evidence – that the Markush formula and all combinations (including SPM) “share a common use or property” and “share common structure” – factors relevant to determine the validity of a Markush patent, under the Draft Guidelines. Accordingly, the ambiguity alleged by Glenmark does not in the view of this Court imply prima facie invalidity.”

In the recent past, Indian courts have seen a spate of litigation involving application of issues such as FRAND.22 Ericsson, which holds the SEPs23 for 2G and 3G technologies, as set by the European Telecommunications Standards Institute (ETSI), has filed suits for infringement against Indian manufactures, most notably, Micromax and Intex. Ericsson alleged that despite offering FRAND license agreements to them both, the companies have desisted from entering into such contracts and have instead used the SEPs in violation of the IPR rights of Ericsson. Final ruling in these cases is yet to be given; the court has however, indicated that the defendants have to pay interim amounts as license fee, subject to adjustment at the final decision stage. Thus, the spate of patent litigations in the recent past has ended up in offering some

22Acronym for licence terms on “Fair, Reasonable and Non Discriminatory” basis, of a

patented product. Agreements are entered into between Standard Setting Organisations

(SSO) and a Standard Essential Patent (SEP) holder. In such a contract, the SEP

(Standard Essential Patent) holder agrees to licence implementers of the standard set by

SSOs, their patented technology which has been adopted into the standard set and is

essential for its execution. The terms of the licence are to be fair, reasonable, and non-

discriminatory.

23

Standard Essential Patents.

Page 8 of 24

clarity on important issues in patent law in India such as the test of novelty, the requirement of working of the patent, the possible remedies that can be granted for breach of patents, etc. However, some issues, especially those in relation to SEPs and their treatment in Indian law still remain open-ended and unanswered. It is expected that future judicial pronouncements will afford greater clarity on these issues.

Copyright law

The Supreme Court, in its decision in Indian Performing Right Society, 24

evocatively described copyright in a film as a "felicitous blend, a beautiful totality, a

constellation of stars.....that ensemble which is the finished produced orchestrated

performance by each of the several participants, although the components may,

sometimes, in themselves be elegant entities." In the earlier part of the judgement, the

Supreme Court likened the various rights– to the lyrics, music, screenplay and still

photographs, other design effects, etc. as a "bundle of exclusive rights" – each capable

of independent exploitation.

There has been a marked shift recently, in the standard applicable for copyright

protection. India recognizes that there can be copyrights in compilations; its earlier

standard of copyrightable works was that they should be the result of industry, effort

and investment (or what is called “the sweat of the brow” test) based on the UK

Chancery Division Judgment in University London Press case25. In the Eastern Book Co

(2008) judgment26 the Supreme Court struck a middle path between the “modicum of

creativity” standard required of by the US Supreme Court in Fiest27 and the “minimum

creativity” standard mandated by the Canadian Supreme Court in CCH Ltd.28and

explained the position in India to be one where not every effort or industry, or

expending of skill, results in copyrightable work, but only those which create works that

are somewhat different in character, involve some intellectual effort, and involve a

certain degree of creativity. The Supreme Court also underscored the object of

copyright law:

24

Indian Performing Right Society v. Eastern Indian Motion Pictures Association &Ors

1977 (2) SCC 820 25

University London Press v. University Tutorial Press [1916] 2 Ch. 601: which

conferred copyright on works merely because time, energy, skill and labour was

expended, that is, originality of skill and labour. 26

Eastern Book Company v. D.B. Modak2008 (8) SCC 1. 27

Fiest Publication Inc. v. Rural Telephone Service 199 US 340 (1991) 28

CCH Canadian Ltd. v. Law Society of Upper Canada (2004) SCC 13

Page 9 of 24

"Copyright is a right to stop others from exploiting the work without the consent or assent of the owner of the copyright. A copyright law presents a balance between the interests and rights of the author and that of the public in protecting the public domain, or to claim the copyright and protect it under the copyright statute. One of the key requirements is that of originality which contributes, and has a direct nexus, in maintaining the interests of the author as well as that of public in protecting the matters in public domain. It is a well-accepted principle of copyright law that there is no copyright in the facts per se, as the facts are not created nor have they originated with the author of any work, which embodies these facts. The issue of copyright is closely connected to that of commercial viability, and commercial consequences and implications…. The word “original” does not demand original or inventive thought, but only that the work should not be copied but should originate from the author. In deciding, therefore, whether a work in the nature of a compilation is original, it is wrong to consider individual parts of it apart from the whole. For many compilations have nothing original in their parts, yet the sum total of the compilation may be original. In such cases the courts have looked to see whether the compilation of the unoriginal material called for work or skill or expense. If it did, it is entitled to be considered original and to be protected against those who wish to steal the fruits of the work or skill or expense by copying it without taking the trouble to compile it themselves. In each case, it is a question of degree whether the labour or skill or ingenuity or expense involved in the compilation is sufficient to warrant a claim to originality in a compilation.”

The importance of copyright law and the public interest in protection of

copyrights, manifested in various treaties and international conventions, which led to

enactment of the statute in India was recognized when the Supreme Court in its opinion

in 198429 held that unauthorized importation of infringing copyright products cannot be

countenanced:

“We have already mentioned the importance attached by international opinion, as manifested by the various international conventions and treaties, to the protection of copyright and the gravity with which traffic in industrial, literary or artistic property is viewed, treating such traffic on par with traffic in narcotics, dangerous drugs and arms. In interpreting the word 'import' in the Copyright Act, we must take not that while the positive requirement of the Copyright conventions is to protect copyright, negatively also, the Transit Trade Convention and the bilateral Treaty make exceptions enabling the Transit State to take measures to protect copyright. If this much is borne in mind, it becomes clear that the word 'import' in Section 53 of the Copyright Act cannot bear the narrow interpretation sought to be places upon it to limit it to import for commerce. It

29

Gramaphone Company of India v.BirendraBahadurPandey1984 (2) SCR 664

Page 10 of 24

must be interpreted in a sense which will fit the Copyright Act into the setting of the international conventions.”

Parallel importation, i.e. importing copyrighted products from a region or country and

selling it elsewhere at a price lower than the copyright owners’- without its permission –

is forbidden according to Indian copyright law in an old judgment of the Delhi High

Court.30This practice defeats the copyright proprietor’s right to determine what price

would it sell its products in different markets. The Delhi High Court also rejected the

challenge to the provision which prohibited parallel importation (on the ground of its

infringing the right to free speech under the Constitution). While doing so, the Court

ruled that copyright law constitutes “a balance struck between the need to protect

expression of an idea, in a given form to promote creativity, on the one hand, and ensure

that such protection does not stifle the objective, i.e. creativity itself. Copyrights are part

of intellectual property law, which are but a species of property law. Unlike in the case of

material or tangible objects, these laws protect specific concepts – in the case of

trademark, distinctiveness, in copyrights, originality of an expression and in the case of

patent, inventiveness. Just as the owner of real property, or a material object is entitled

to legitimately assert his domain over it, and protect it from unfair appropriation by

another, the intellectual property owner is, by these laws, enabled to protect

unwarranted exploitation or unauthorized use of what are his property rights. So viewed,

the provisions of law… to the extent they prohibit the sale or hiring of copies – for

commerce or profit, by anyone, even the buyer of a copy, without the authority or

permission of the copyright owner, amounts to protection of that property right.”

In a similar vein, it was stated in the ESPN case31 that “The reporting of news is

undoubtedly a fundamental right vested in the news channel by way of Article 19(1)(a)

of the Constitution but, however, … commercial exploitation (is)… not protected by

Article 19(1)(a), especially when the factum of the programme being aired later in the

day is constantly advertised and announced by the news channel and such programmes

are liberally interposed with commercials.”

One of the earliest expositions of fair use (i.e. use of copyright works for

research, academic and largely non-commercial purposes) anticipated the

transformative use of copyrighted works.32 In this, the Indian Supreme Court was

prescient in that it anticipated the transformative nature of use of a copyrighted work as

30

Penguin Books Ltd. v. Indian Book Distributors AIR 1985 Del 29 31

ESPN Star Sports v. Global Broadcast News Ltd.&Ors,2008(38) PTC 477( Del) 32

R.G. Anand v.Delux Films 1978 (4) SCC 118

Page 11 of 24

part of fair use (later explained in a different context in Campbell33(1994)by the US

Supreme Court).

“Where the theme is the same but is presented and treated differently so that the subsequent work becomes a completely new work, no question of violation of copyright arises.”

The idea-expression merger doctrine is followed in India: Chancellor Masters and

Scholars of the University of Oxford discussed this doctrine in detail.34This doctrine

means that when there are limited ways of expressing an idea, such as, for instance in

mathematical questions, etc., enclosing the expression in copyright would deprive free

use of the idea. For instance, use of alpha numerics, to describe articles or

combinations, etc. cannot lead to valid copyright claims.

One of the earliest rulings on fair use was by the Madras High Court.35 The court’s

holding was that in order to constitute a fair dealing, there must be no intention on the

33

Campbell v. Accuff-Rose Music 510 US 569 (1994) 34

Chancellor Masters and Scholars of the University of Oxford v. Narendra Publishing

2008 (38) PTC385 (Del). 35

M/s. Blackwood & Sons Ltd. v. A.N. Parasuraman(AIR 1959 Mad 410). This case dealt

with the interpretation of Section 2(1) of the Copyright Act, 1911.

Section 2(1) reads

(1) Copyright in a work shall be deemed to be infringed by any person who, without the

consent of the owner of the copyright, does anything the sole right to do which is by this

Act conferred on the owner of the copyright: Provided that the following acts shall not

constitute an infringement of copyright:

(i) Any fair dealing with any work for the purposes of private study, research,

criticism, review, or newspaper summary

(ii) Where the author of an artistic work is not the owner of the copyright therein,

the use by the author of any mould, cast, sketch, plan, model, or study made by

him for the purpose of the work, provided that he does not thereby repeat or

imitate the main design of that work(iii) The making or publishing of paintings,

drawings, engravings, or photographs of a work of sculpture or artistic

craftsmanship, if permanently situate in a public place or building, or the making

or publishing of paintings, drawings, engravings, or photographs (which are not

in the nature of architectural drawings or plans) of any architectural work of art.

(iv) The publication in a collection, mainly composed of non-copyright matter,

bona fide intended for the use of schools, and so described in the title and in any

advertisements issued by the publisher, of short passages from published literary

works not themselves published for the use of schools in which copyright subsists:

Provided that not more than two of such passages from works by the same author

are published by the same publisher within five years, and that the source from

which such passages are taken is acknowledged.

Page 12 of 24

part of the alleged infringer, to compete with the copyright holder of the work and to

derive profits from such competition and also, the motive of the alleged infringer in

dealing with the work must not be improper. Copying for the purpose of criticism or

parody is not infringement, and is deemed “fair use”. This was held by the Kerala High

Court;36 the court held that when copying was for the purpose of criticism, it amounted

to fair dealing. The Court said that the factors relevant for this determination were: “(1)

the quantum and value of the matter taken in relation to the comments or criticism; (2)

the purpose for which it is taken; and (3) the likelihood of competition between the two

works.”

Moral Rights

In conformity with the Berne Convention, the Indian Copyright Act, 195737 protects the

moral rights of authors. In Amar Nath Sehgal’s38 case, the Court held Section 57 was the

basis to protect not only the moral rights of the author but also the cultural heritage of

the nation. The Court observed: “Knowledge about authorship not only identifies the

creator, it also identifies his contribution to national culture. It also makes possible to

understand the course of cultural development in a country. Linked to each other, one

flowing out from the other, right of integrity ultimately contributes to the overall

integrity of the cultural domain of a nation. Language of Section 57 does not exclude the

right of integrity in relation to cultural heritage. The cultural heritage would include the

artist whose creativity and ingenuity is amongst the valuable cultural resources of a

nation. Through the telescope of Section 57 it is possible to legally protect the cultural

heritage of India through the moral rights of the artist.”

Compulsory licensing: copyright

(v) The publication in a newspaper of a report of a lecture delivered in public,

unless the report is prohibited by conspicuous written or printed notice affixed

before and maintained during the lecture at or about the main entrance of the

building in which the lecture is given, and, except whilst the building is being

used for public worship, in a position near the lecturer; but nothing in this

paragraph shall affect the provisions in paragraph (i) as to newspaper

summaries.

(vi)The reading or recitation in public by one person of any reasonable extract

from any published work.

36

Civic Chandran v.AmminiAmma1996 PTC 16 37

Section 57, Copyright Act, 1957. 38

Amar Nath Sehgal v. Union of India (2005 (30) PTC 253)

Page 13 of 24

India follows the Berne Convention and Article 9 of its Paris Text. Under its

copyright law, if reproduction or publication or communication of a copyrighted work is

not licensed on terms that are considered by the complainant to be reasonable, and the

Copyright Board (which decides the issue) holds that the terms are not reasonable, the

copyright proprietor can be asked to license the work for the purpose sought, on terms

deemed reasonable. The Supreme Court in its 2008 judgment in Entertainment

Network,39 noted that compulsory license is an exception to the owner’s right to exploit

his/her work and that the provisions of Section 31(1)(b) of the Act do not create any

entitlement in favour of the individual seeking compulsory licence. Again, the Supreme

Court in 2012 in its Super Cassette Industries ruling40recognised that copyright in a

‘work’ is a “valuable legal right” and that, “[w]hether such a right should be transferred

or not is a matter, essentially, for the "owner" of the copyright to determine”. Therefore,

while examining matters involving grant of compulsory licence for a copyright, the issue

has to be determined finally and no interim orders can be passed during the pendency

of the proceedings. These decisions of the courts have served to expound the law in

relation to copyright in India concerning the standard of copyright protection, moral

rights of the author, the public interest element of copyrights and compulsory licensing

of copyrights, etc.

Intersections of Copyrights with Designs and Trademarks

In a Division Bench ruling of the Delhi High Court, the question involved was if

lack of design registration (of an article produced through mechanical process more

than 50 times) led to loss of copyright in the underlying artistic work. The Court held (in

its Microfibres judgement, in 200941) that “in the original work of art, copyright would

39

Supra, footnote 3. 40

Super Cassette Industries Ltd. v. Music Broadcast Pvt. Ltd., 2012 (5) SCC 488 41

Microfibres Inc.v. Girdhar2009 (40) PTC 519 (Del). This case dealt with the interplay

between Section 2(c) and Section 15(2) of the Copyright Act and Section 2(d) of the

Designs Act.

Section 2(c) of the Copyright Act reads: “artistic work” means

(i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan),

an engraving or a photograph, whether or not any such work possesses artistic

quality;

(ii) a 4[work of architecture]; and

(iii) any other work of artistic craftsmanship;

Section 15 of the Copyright Act reads “Special provision regarding copyright in designs

registered or capable of being registered under the Designs Act, 2000.

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exist and the author/holder would continue enjoying the longer protection granted

under the Copyright Act in respect of the original artistic work. Thus, for instance a

famous painting will continue to enjoy the protection available to an artistic work under

the Copyright Act. A design created from such a painting for the purpose of industrial

application on an article so as to produce an article which has features of shape, or

configuration or pattern or ornament or composition of lines or colours and which

appeals to the eye would also be entitled design protection in terms of the provisions of

the Designs Act. Therefore, if the design is registered under the Designs Act, the Design

would lose its copyright protection under the Copyright Act but not the original

painting.”

In a three judge Bench decision, the Delhi High court had to deal with whether

the lack of, or after lapse of design protection, a trademark owner could claim exclusive

trademarks rights over the marks, for the reason that they fulfilled the distinctiveness

criteria, in its Microlubes(2013) judgement. The Court ruled42 in its majority opinion that

the remedy of trademark passing off would not be precluded even if the design

registration ends.

Trademarks Indian trademark law is well-developed and nuanced. The law grants trademark

registration entitlement to its proprietor if the mark is “distinctive”. The guidance given

(1) Copyright shall not subsist under this Act in any design which is registered

under the Designs Act, 2000 (16 of 2000).

(2) Copyright in any design, which is capable of being registered under

the Designs Act, 2000 (16 of 2000), but which has not been so registered, shall

cease as soon as any article to which the design has been applied has been

reproduced more than fifty times by an industrial process by the owner of the

copyright, or, with his licence, by any other person.”

Section 2(d) of the Designs Act provides “design” means only the features of shape,

configuration, pattern, ornament or composition of lines or colours applied to any article

whether in two dimensional or three dimensional or in both forms, by any industrial

process or means, whether manual, mechanical or chemical, separate or combined,

which in the finished article appeal to and are judged solely by the eye; but does not

include any mode or principle of construction or anything which is in substance a mere

mechanical device, and does not include any trade mark as defined in clause (v) of sub-

section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) or

property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any

artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957 (14 of 1957).

42

Microlube India Limited v.Rakesh Kumar 2013(55) PTC 61.

Page 15 of 24

is contained in specific statutory provisions. Actions for infringement of registered

trademarks have to fulfill a narrow test of proof of the complained mark being

“deceptively similar” to the plaintiff’s mark. The test applied by the courts is one of

overall effect and not a frame-by-frame or bit-by-bit comparison. The Indian Supreme

Court in Ruston and Hornsby Ltd.43ruled that in a passing off action, the issue which

requires determination is whether the defendant’s goods are so marked to be designed

or calculated to lead purchasers to believe that they are the plaintiff’s goods. However,

in the case of infringement action, the issue required to be addressed is whether the

defendant uses a mark which is the same as, or which is a colourable imitation of the

Plaintiff’s trademark. The Court also held that although the Defendant may not be using

the trademark of the Plaintiff, the get up of its goods may be so much like of the

Plaintiffs that a clear case of passing off would prove. Conversely, even in the case of

complete dissimilarity in get up, prices and nature of goods, in an infringement action,

injunction would issue if it is proved that the Defendant is improperly using the

Plaintiff’s mark. It is the likelihood of confusion which has to be seen.44

Much before the old 1958 Indian Trademarks Act was replaced with legislation in

the background of India’s TRIPS entry, Indian courts had recognized the concept of

trademark dilution, i.e. use of a trademark in respect of products or services that were

dissimilar to the plaintiff’s goods or services.45 This recognition finds statutory approval

under the Trademarks Act, 1999.46 Trademark anti-dilution rights can be used not only

in respect of well-known marks (separately defined) but also in respect of goods and

services which have acquired such a distinct reputation in India that their use for

dissimilar goods and services can potentially impinge on their owner’s rights. It has been

held that for success in trademark dilution claims, it has to be established that there is

identity or similarity with the registered trademark; the goods, in question, of course,

necessarily are dissimilar to the plaintiff’s goods; the plaintiff has to also prove that his

mark has "a reputation in India" and the use of that mark "without due cause" takes

unfair advantage, or is "detrimental to" the distinctive character or repute of the

43

Ruston and Hornsby Ltd. vs. Jamindara Engineering Co AIR 1970 SC 1649. Also:

Parle Products v. JP & Co. AIR 1972 SC 1359, Amritdhara Pharmacy v. SatyaDeo

Gupta AIR 1963 SC 449, Cadila Health Care v. Cadila Pharmaceuticals (2001) 5 SCC

73 and Heinz Italia v. Dabur India (2007) 6 SCC 1. 44

Corning Incorporated v. Raj Kumar Garg (2004) 28 PTC 257. 45

Daimler Benz Aktiegesellschaft and another vs. Hybo Hindustan AIR 1994 Del

239;Ciba-Geigy Ltd. and Anr. v. Surinder Singh and Ors 1998 PTC (18) 545; Larsen &

Toubro Limited v. LachmiNarain Traders ILR (2008) 2 Del 687 46

Section 29 (4), Trade Marks Act, 1999.

Page 16 of 24

plaintiff’s mark. At the heart of the claim is the duty to establish that the mark has "a

reputation in India" – which is not a requirement in the normal class of infringement.47

Trans-border reputation of trademarks and their underlying products or brands

is recognized when claims of a trademark proprietor for its use are asserted.48Indian

Supreme Court decisions teach that distinctive and famous trademarks need not be

confined to national territorial boundaries and that trans-border reputation of such

marks is recognised by Indian courts, for the purpose of granting injunctive relief,

against dishonest attempts at their appropriation.

Corporate name trademarks are also protected.49 Likewise, trademark in domain

names are recognised and given effect to.50 In its Satyam Infoway decision (2004),51 the

Supreme Court said that "a domain name may have all the characteristics of a

trademark and could found an action for passing off" and that ordinary consumers could

be deceived by the similarity of websites and conclude that “the first domain name had

misrepresented its goods or services through its promotional activities and the first

domain owner would thereby lose its custom." In comparison to the regimes of

copyright and patents, the law on trademarks has not received as much judicial

consideration. Resultantly, a number of crucial issues in relation to trademark

protection are still somewhat in flux; the law on these issues will receive greater clarity

as and when these issues come up before the court.

Remedies

Injunctions and damages are the most commonly claimed remedies for

infringement or violation of intellectual property rights. Besides, trademark or copyright

infringement is also subject to penal sanction.

Since trials in IPR enforcement actions can be time consuming, more often than

not adinterim relief is hotly contested. India follows the common law standards for

grant of adinterim relief such as examination of prima facie case, existence of

irreparable hardship and balance of convenience. The Supreme Court underscored the

importance of granting such interim relief in the Midas Hygene case;52 the Court said

47

ITC Ltd. vs. Philips Morris Products,2010 (42) PTC 572 (Del.), Skol Breweries vs.

Unisafe Technologies 2010 (44) PTC 209. 48

MilmetOftho Industries and Ors. vs. Allergan Inc (2004) 12 SCC 624; N.R. Dongre v.

Whirlpool Corporation 1996 (5) SCC 714 49

Section 29 (5), Trademarks Act, 1999. 50

Info Edge (India) Pvt. Ltd.&Anr vs.Shailesh Gupta &Anr.2002 (24) PTC 355 51

Satyam Infoway v.Sifynet Solutions 2004 (6) SCC 145 52

Midas Hygene Ltd. v. Sudhir Bhatia 2008 (28) PTC 121

Page 17 of 24

that “in cases of infringement either of Trade Mark or of Copyright normally an

injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of

injunction in such cases. The grant of injunction also becomes necessary if it prima facie

appears that the adoption of the Mark was itself dishonest.”

In patent cases, as in others, courts have followed the three-step analysis of existence of

prima facie case, irreparable hardship and balance of convenience. In F. Hoffman La

Roche Ltd. v. Cipla53the element of “public interest” was recognized as a part of the

balance of convenience exercise which the court undertakes while considering the grant

of a temporary injunction. The plaintiff, patentee of the anti-cancer drug Tarceva,

sought an injunction against an Indian generic manufacturer, for allegedly infringing its

patent of its drug. The generic manufacturer had counter claimed for patent

cancellation. The court held that the plaintiff had a prima facie case in its support;

equally, the court reasoned from the materials on record that the defendant’s challenge

was a credible one. In these circumstances, the court held that public interest

constituted a significant element while considering balance of convenience, since the

price differential between the patented drug (which was then selling at US $ 100 per

tablet) and the generic product (then selling at US $ 30 per tablet) was so significant

that those using the latter – given that the product was a life-saving one – would be

threatened with loss of lives and un-compensable harm. The court also, at the same

time, imposed conditions on the generic manufacturer to disclose its sales (of the

questioned drug), file periodic accounts and furnish continuing guarantees to pay

damages in the event of the plaintiff succeeding. In the final judgement, the plaintiff

could not establish patent infringement and failed, though the defendant’s argument

about patent invalidity was not accepted.

A recent decision –Merck Sharp Dohme v. Glenmark Pharmaceuticals Ltd. 54 saw

a Division Bench of the Delhi High Court clarifying that “public interest” cannot always

be decisive criteria. The patent owner sued for infringement of patent for an anti-

diabetes drug. The court found that prima facie infringement had been made out; it

echoed a previous ruling in Bayer Corporation55 that"[i]f, after a patentee, rewarded for

his toil – in the form of protection against infringement – were to be informed that

someone, not holding a patent, would be reaping the fruits of his efforts and investment,

such a result would be destructive of the objectives underlying the Patents Act.".

53

Confirmed by the Division Bench in Hoffmann-La Roche Ltd. v. Cipla (2009) 40 PTC

125 (DB). 54

FAO 190/2013 decided on 20-03-2015 55

Bayer Corporation &Ors. v. Cipla, Union of India (UOI) & Ors.,162 (2009) DLT 371

Page 18 of 24

Indian Courts are empowered to, by procedural laws and frequently resort to Anton

Piller type orders for assistance by a court appointed commissioner to collect material

for fuller adjudication. This procedure has been recognized since 1989.56

Quia Timet actions, based on apprehensions that the defendant would infringe the

plaintiff’s rights are maintainable; Indian courts recognize this form of action and have

granted reliefs. For instance, the Delhi High Court in Yahoo Inc.57granted a quiatimet

relief to Yahoo, which apprehended that the defendants would release a

cinematographic film titled ‘YAHOO’ – a well-known trademark. Similarly, the High Court

in Fastrack Communications,58ruled that where the plaintiff apprehends that the

defendant may pass off its goods as that of the plaintiff, the latter has the right to ‘nip

the evil in the bud’ and institute a quia timet action.

John Doe Orders: John Doe orders permit the plaintiff to enforce an injunction order against

unidentified/unnamed defendants, ‘John Doe’ being a generic name for such

defendants. This concept came into force due to the peculiar nature of copyright piracy.

56

PayaniAchuthan vs.ChamballikunduHarijan Fisheries Development Cooperative

Society &Ors AIR 1996 Kerala 276 Also:Basanta Kumar Swain vs.Baidya Kumar

Parida&Ors AIR 1989 Orissa 118;MohitBhargava v. Bharat BhushanBhargava2007 (4)

SCC 795. 57

Yahoo Inc. v. FirozNadiawala (2014) 58 PTC 352. This case dealt with the

interpretation of Section 2(z)(b) of the Trade Marks Act.

Section 2(z)(b) of the Trade Marks Act, 1999 reads

“Trade mark” means a mark capable of being represented graphically and which is

capable of distinguishing the goods or services of one person from those of others and

may include shape of goods, their packaging and combination of colours; and

(i) in relation to Chapter XII (other than section 107), a registered trademark or a

mark used in relation to goods or services for the purpose of indicating or so as to

indicate a connection in the course of trade between the goods or services, as the

case may be, and some person having the right as proprietor to use the mark; and

(ii) in relation to other provisions of this Act, a mark used or proposed to be used

in relation to goods or services for the purpose of indicating or so to indicate a

connection in the course of trade between the goods or services, as the case may

be, and some person having the right, either as proprietor or by way of permitted

user, to use the mark whether with or without any indication of the identity of that

person, and includes a certification trade mark or collective mark.

58

Fastrack Communications Pvt. Ltd. v. Manish Singhal (2012) 50 PTC 98 (the remedy

has also been used in Super Cassettes v. Myspace Inc. (2011) 48 PTC 49 and by the

Madras High Court, in Matrix Laboratories Ltd. v. F. Hoffman La Roche Ltd. (2012) 1

CTC 381, where it was held that where the defendant in its petition for revocation of

patent had expressed its intention to commercially use/sell/distribute the patent, the

patentee would be entitled to initiate a quiatimet action.

Page 19 of 24

The Delhi High Court in Taj Television59recognised Indian Courts’ power to pass John

Doe orders, although it refused to pass such an order on facts. Recently, the Bombay

High Court in passed a John Doe order at the interim stage in a quiatimet action,

granting protection to the plaintiff against the infringement of its copyright in the film

‘Happy New Year’. However, it must be noted that these orders are passed against

unidentified defendants only at the interim stage, and the final relief would be passed

only against those defendants, which are identified and impleaded in the proceedings

before the court.

A troublesome application of this concept has also been witnessed in India, wherein

courts have directed Internet Service Providers (ISPs), which are identified defendants,

to block access to websites that upload pirated content, in violation of the plaintiff’s

copyright.60

Damages

Courts in India follow the UK model of assessing and awarding damages. In a

departure, for the first time, the Delhi High Court awarded punitive damages though harm

could not be established by any objective standard through which damages are awarded.

This was in an exparte judgement in Times Incorporated (2005).61The court reasoned that

while dealing actions for infringement of trademarks, copyrights, patents, etc. courts

“should not only grant compensatory damages but award punitive damages also with a view

to discourage and dishearten law breakers who indulge in violations with impunity…. so that

they realize that in case they are caught, they would be liable not only to reimburse the

aggrieved party but would be liable to pay punitive damages also, which may spell financial

disaster for them.” This reasoning was disapproved by a Division Bench in a

trademark/product disparagement case, in Hindustan Unilever Ltd.62The Court relied on the

UK authorities Rookes v. Barnard,63and Cassel & Co v. Broome,64 especially the latter, that

“Damages remain a civil, not a criminal, remedy, even where an exemplary award is

appropriate, and juries should not be encouraged to lose sight of the fact that in making

59

Taj Television vs. RajanMandal [2003] FSR 22. Recently, the Bombay High Court

issued such an order in Red Chillies Entertainment Pvt. Ltd. v. Hathway Cable and

Datacom Ltd. (dated 14.10.2014) 60

(See for example, the Madras High Court’s decision in R.K. Productions v. BSNL

(2012) 5 LW 626; and the Calcutta High Court’s decision in Sagarika Music Pvt. Ltd.

v.Dishnet Wireless Ltd.). 61

Times Incorporated v.LokeshSrivastava116 (2005) DLT 569. Followed in Microsoft

Corporation vs. Yogesh Papat and Another 2005 (30) PTC 245 (Del) and other cases. 62

Hindustan Unilever Ltd.vs. Reckitt Benckiser India Limited, 2014(57) PTC 495 (Del)

(DB). 63

[1964] 1 All ER 367 64

(1972) AC 1027

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such an award they are putting money into a plaintiff’s pocket….” and perhaps most

crucially – the punitive element of the damages should follow the damages assessed

otherwise (or general) damages; exemplary damages can be awarded only if the Court is

“satisfied that the punitive or exemplary element is not sufficiently met within the figure

which they have arrived at for the plaintiff’s solatium”.

Efforts by Courts to ensure efficiency and speed by administrative authorities and

resolution of disputes

In a 2010 decision, the Delhi High Court resolved a vexed question of what is the

date when the patent is said to be granted, given that several pre-grant opposition

applications are filed opposing patent claims. The Court ruled65that the date of grant of

patent is the date on which the Controller passes an order to that effect on the file. It

was also directed that the Controller should consider all pre-grant oppositions and

decide them together and ensure that the digitally signed copy is published on the

website the same day.

A patent can be annulled in three ways: one by an opposition (pre- or post-

grant), through a revocation proceeding before the IPAB or by a counter-claim in an

infringement suit. Section 25(2) provides a post-grant opposition mechanism whereby

‘any person interested’ can oppose a granted patent within one year of date of

publication of grant. If the opposition fails or no notice of opposition is provided within

one year, the patent crystallizes. After this, if the patent has to be annulled, Section 64

provides two options – a revocation petition before the IPAB or a counter-claim in an

infringement suit before a HC. The Supreme Court in its Enercon judgement in 201466

65

Snehlata Gupte v. Union of India WP 3516/2007 (decided on 15-07-2010) 66

Alloys Woben v. YogeshMehra AIR 2014 SC 2210. This case dealt with the

interpretation of Section 64(1) of the Patents Act. Section 64(1) provides:

Section 64– Revocation of patents(1) Subject to the provisions contained in this Act, a

patent, whether granted before or after the commencement of this Act, may, be revoked

on a petition of any person interested or of the Central Government by the Appellate

Board or on a counter-claim in a suit for infringement of the patent by the High Court on

any of the following grounds that is to say

(a) that the invention, so far as claimed in any claim of the complete specification, was

claimed in a valid claim of earlier priority date contained in the complete specification of

another patent granted in India;

(b) that the patent was granted on the application of a person not entitled under the

provisions of this Act to apply therefore;

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(c) that the patent was obtained wrongfully in contravention of the rights of the Petitioner

or any person under or through whom he claims;

(d) that the subject of any claim of the complete specification is not an invention within

the meaning of this Act;

(e) that the invention so far as claimed in any claim of the complete specification is not

new, having regard to what was publicly known or publicly used in India before the

priority date of the claim or to what was published in India or elsewhere in any of the

documents referred to in Section 13;

(f) that the invention so far as claimed in any claim of the complete specification is

obvious or does not involve any inventive step, having regard to what was publicly known

or publicly used in India or what was published in India or elsewhere before the priority

date of the claim:

(g) that the invention, so far as claimed in any claim of the complete specification, is not

useful;

(h) that the complete specification does not sufficiently and fairly describe the invention

and the method by which it is to be performed, that is to say, that the description of the

method or the instructions for the working of the invention as contained in the complete

specification are not by themselves sufficient to enable a person in India possessing

average skill in, and average knowledge of, the art to which the invention relates, to work

the invention, or that it does not disclose the best method of performing it which was

known to the applicant for the patent and for which he was entitled to claim protection;

(i) that the scope of any claim of the complete specification is not sufficiently and clearly

defined or that any claim of the complete specification is not fairly based on the matter

disclosed in the specification;

(j) that the patent was obtained on a false suggestion or representation;

(k) that the subject of any claim of the complete specification is not patentable under this

Act;

(l) that the invention so far as claimed in any claim of the complete specification was

secretly used in India, otherwise than as mentioned in Sub-section (3), before the priority

date of the claim;

(m) that the applicant for the patent has failed to disclose to the Controller the

information required by Section 8 or has furnished information which in any material

particular was false to his knowledge;

(n) that the applicant contravened any direction for secrecy passed Under Section 35 or

made or caused to be made an application for the grant of a patent outside India in

contravention of Section 39;

(o) that leave to amend the complete specification Under Section 57 or Section 58 was

obtained by fraud;

Page 22 of 24

decided that remedies available through revocation petition before the IPAB or a

counter-claim in an infringement suit before the HC, were not conjunctive and a choice

would have to be made between the two.

“the liberty granted to any person interested to file a “revocation petition”, to challenge the grant of a patent to an individual, cannot be adopted simultaneously by the same person, i.e., firstly, by filing a “revocation petition”, and at the same time, by filing a “counter-claim” in a suit for infringement […] According to learned counsel, the concerned person must choose one of the above remedies. […]. We do not have the slightest hesitation in accepting the above contention (fifth in the series of contentions), that even though more than one remedies are available to the respondents in Section 64 of the Patents Act, the word “or” used therein separating the different remedies provided therein, would disentitle them, to avail of both the remedies, for the same purpose, simultaneously. On principle also, this would be the correct legal position….If any proceedings have been initiated by “any person interested”, under Section 25(2) of the Patents Act, the same will eclipse the right of the same person to file a “revocation petition” under Section 64(1) of the Patents Act. And also, to invoke the right granted under Section 64(1) of the Patents Act, to file a “counter-claim” (in response to an “infringement suit”, to seek the revocation of a patent)”. In an earlier effort, the Delhi High Court had indicated a speedy procedure

whereby in patent litigation, the case could be fast tracked by completing pleadings and

discovery in a pre-determined timeline, after which issues (or points of controversy)

could be settled. The parties would then proceed to trial and minimize oral evidence,

confining it to one expert (or if the case warranted) only, the minimum number of

experts needed. The court would then appoint a Special Assessor (it can do so under

Section 115 of the Act) who would furnish it with an independent report; parties would

be provided the report after which hearings would be held and concluded. This

procedure led to the final decision in a patent litigation within two years after the

Supreme Court rejected the interlocutory appeal and within about three and a half

years of the case filing in the court.

Conclusions

The intellectual property law regime has seen rapid change in the last decade or

so, in India. Today, there is greater awareness amongst the legal community and courts

(p) that the complete specification does not disclose or wrongly mentions the source or

geographical origin of biological material used for the invention;

(q) that the invention so far as claimed in any claim of the complete specification was

anticipated having regard to the knowledge, oral or otherwise, available within any local

or indigenous community in India or elsewhere.

Page 23 of 24

– in the wake of the country’s accession to TRIPS that IPR is a significant driver of

economic development. This awareness can be seen both in the bar and the bench. In

terms of legal capacity building, more and more, younger generation lawyers are

showing better and more nuanced understanding of the various issues in intellectual

property law as well as the significance of India’s commitments to IPR protection at the

global level. This can also be seen by the growth in the number of law firms that have

exclusive and dedicated focus on IPR practice.

On the side of the bench, the evolving jurisprudence reveals that the courts are

cautious of adopting a doctrinaire approach in embracing all concepts – especially

remedies in law. The courts have so far attempted to balance the rights of innovator and

stepped in to protect them from appropriation by those who have no right to do so;

equally, where the protection claimed by IPR owners is too broad as to stifle innovation

and progress, the courts have refused to do so. The question of remedies to be granted

for infringement of IP rights is a particularly significant example of courts attempting to

strike an appropriate balance between the protection of IPR rights of the holder and the

larger interests of the public. The refusal to grant the remedy of injunctions on life

saving drugs, for instance, evidences that the courts in India do not treat the protection

of IP rights as absolute and such rights can be made subservient to the larger public

interest. However, at the same time, there is a growing trend in the Indian judiciary of

recognising that the evolution of technology also means that IP rights are increasingly

susceptible to various kinds of infringement, beyond those traditionally recognized.

Hence, to deal with these kinds of infringement, Indian courts have granted a number of

remedies that were hitherto unknown in the realm of civil law; the grant of exparte

injunctions against unknown defendants, awarding interim royalties, etc. are some

examples of a changing judicial trend that seeks to align itself with global practice in

cases of IPR infringement. In some sense, the legal regime governing IPR in India is still

at a nascent stage, and the role and the potential of the Indian courts in shaping and

chiseling the path of IPR law, cannot be overemphasized.

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