Intellectual Property Rights and its Relevance in India

In earlier times, the concept of property meant something tangible. Man used to be in possession of property and property became the source of wealth and status in the society for him. As time went by, property created by the scope of one’s intellect became what is known as Intellectual Property Right. The problem with Intellectual Property was that it was intangible in nature.

Property has always been a symbol of power and strength for every individual and that is why every individual tries to maximize his property.

A human being is the sole proprietor of his brains and even law gives him a proprietor right in it. Just as John Locke had pointed out, a person has his property, two things:-

1.         The person himself or to say the human body.
2.         The skill of doing labour with his body and the work of his hand.

Similarly, intellect too is an integral part of his personality and it plays vital role in deciding what works his body can engage into or what works his hands would do or in other words we can say that a person intellect is exclusively his own.

Every object whether it is material/ non material, owns its existence to ideas and hence to the origin of ideas, that is intellect. This also holds further that any property in the generic sense, which can claim a proprietary right, is called Intellectual Property.

Further, if intellect or intellectual works is one’s personal characteristic or property, then anything that is the outcome of this application of his intellect is equally his own. This provides the law to give a person the right to own what he has created or produced. And this proprietor right over a product produced out of his intellect is called Intellectual Property Right.

The Twenty First Century is a century of knowledge, indeed the centaury of the Intellect. A nation’s ability to translate knowledge into wealth and social good through innovation hold the key to creation as well as processing of knowledge consequently issues generation, evaluation, exploitation of Intellectual Property would become critically important all over the world. Intellectual Property can be characterized as the property in Idea or their expression. It’s a creation of mind for example:  A technological Innovation, a poem or a design. It protects the rights of individuals and business who have transformed their ideas into property by granting rights to the owner of those properties.

The need arose for laws to protect such kinds of Intellectual Property laws to protect the various forms of Intellectual Property like Trade Marks, copy Rights, Designs, Patent & Geographical Indication.

For instance Tata Nano car: The entire car and its innovative engineering are protected by patents. The name “TATA NANO is protected by Trade Marks”. The design of car has design protection and all the pamphlets made for advertisement of car are protected of copy right.

The rights have been modified and new provisions have been created in order to cover new areas of Science and Technology like Information Technology, Biotechnology and Non Service Sector.  It may be observed that World Trade Organization (WTO) agreement on Trade-Related Aspects of Intellectual Property Right( popularly known as TRIPS) has extended minimum standards for protection globally. Hence India is under a pressure to increase the level of Intellectual Property protection in its own regime, based on standards in developed countries.

There are various forms of IPR. The Trade Related Aspects of Intellectual Property Rights (popularly known as TRIPS) in the Agreement of the World Trade Organisation (WTO) recognises seven forms of IPR, namely, patents, designs, trademarks, copyrights, geographical indications, integrated circuits and trade secrets.

Patents: These are legal rights granted for new inventions employing scientific and technical knowledge. Example: A new drug for the treatment of AIDS and a new cell phone.

Industrial Designs: A design is an idea or conception as to the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article, two or three-dimensional or both, by any industrial process or means which in the finished article appeal to and are judged solely by the eye or product. Examples: Designs as applied to shoes, TV, textiles.

Trade Marks: A trade mark is a visual symbol in the form of a word, device or label applied to an article of manufacture or commerce with a view to indicating to the public the origin of manufacture of the goods affixed with that mark .It distinguishes such goods from others in the trade. Examples: Coca Cola in soft drinks, SONY in electronic goods.

Copyrights: A copyright is basically the right to copy and make use of literary, dramatic, musical, artistic works, cinematographic films, records and broadcasts. It is a proprietary right and comes into existence as soon as the work is created. The concept had its origin in the Common Law. Subsequently it came to be governed by the statutory laws of each country. Examples: Poems, artistic drawings, paintings, computer / programs.

Protection for new plant varieties: TRIPS provisions of the WTO Agreement make it mandatory for member countries to provide protection for new plant varieties. Examples: New variety of rice or wheat. The provisions have given member countries two options for providing protection to new plant varieties —:

(i) Under the patent law itself and;
(ii) By a separate system (called Sui generis system).

Geographical Indications: These are indications that identify goods as originating in the territory of a country, a region or a locality in that territory, where a specific quality, reputation or other characteristic of the goods is essentially attributed to their geographical origin. Examples: Darjeeling tea, Kancheepuram sari.

Indian Government has taken a comprehensive set of initiatives to modernize the intellectual property administration in the country in view of the strategic significance assumed by intellectual property in the context of globalisation and liberalization of the Indian economy and the increasing administrative steps to create a modern and facilitative set up. The Designs Act, 2000, the Trade Marks Act, 1999 and the Geographical Indications of Goods (Registration and Protection) Act 1999 have already been enacted to harmonize the Indian IP administration with the global system. In the Ministry of Commerce and Industry, the office of the 'Controller General of Patents, Designs and Trade Marks (CGPDTM)' has been set up under the Department of Industrial Policy and Promotion.

It administers all matters relating to patents, designs, trademarks and geographical indications and also directs and supervises the functioning of :-

•     The Patent Office (including Designs Wing)
•     The Patent Information System (PIS)
•     The Trade Marks Registry (TMR), and
•     The Geographical Indications Registry (GIR)

Besides, a 'Copyright Office' has been set up in the Department of Education of the Ministry of Human Resource Development, to provide all facilities including registration of copyrights and its neighbouring rights.

As far as issues relating to layout design of integrated circuits are concerned, 'Department of Information Technology' in the Ministry of Information Technology is the nodal organisation. While, 'Protection of Plant Varieties and Farmers' Rights Authority' in Ministry of Agriculture administers all measures and policies relating to plant varieties.

For complementing the administrative set up, several legislative initiatives have been taken. It includes, the Trade Marks Act, 1999; the Geographical Indications of Goods (Registration and Protection) Act 1999; the Designs Act, 2000; the Patents Act, 1970 and its subsequent amendments in 2002 and 2005; Indian Copyright Act, 1957 and its amendment Copyright (Amendment) Act, 1999; Semiconductor Integrated Circuit Layout Design Act, 2000; as well as the Protection of Plant varieties and Farmer's Rights Act, 2001.

A human endeavour which promotes Social, Economical, Scientifical or Cultural Development of the society must be encouraged and the creator or the innovator needs to be rewarded by suitable legal protection for his intellectual creation. Consequently Intellectual Property Right are those legal rights which govern the use of creation of Human Brains. Protection of Intellectual Properties is a very critical element in the offshore business model. There have been many cases where companies have lost their position in the market due to the loss of intellectual property. Understanding the country’s IP Rights and following the best practices described in this paper can drastically reduce the risk of losing the company’s intellectual property. Commitment to protect the intellectual property of a company should be developed and nurtured at all levels of the organization.

The bottom-line is that India considers itself a responsible member of the WTO which suggests that international class IPR protection should be in place. For instance even Bill Gates, the chief executive officer of Microsoft Corporation, has distinguished India as a most promising base for software development. If such an IPR-conscious business leader like Gates is of this opinion, one can only conclude that India's IPR scene is no deterrent. And in near future India will formulate more effective law in order to cope up with new areas which are yet to come in the field of IPR. Intellectual Property Rights (IPRs) play an important role in the social, economic and cultural development of a society. Intellectual Property Rights in India (IPRs in India) are gaining lot of attention and importance in India. India has begun to see some positive results as awareness of the need for greater IP protection has increased. India must continue to improve its IPR protection, or risk being left behind as other countries in the developing world implement protections and build their own knowledge based economies.what is a patent.

By
Biswajit Sarkar

Trademark Attorney in India

Introduction

A Trademark is almost like the identity of a good or service. The name, symbol, mark or anything that distinguishes one good from another, can be a trademark. And for maintaining the unique identity of a good or service, it is essential to protect its trademark from being copied or being infringed upon. And that is where the expertise of a Trademark Attorney comes into use. And it is an upcoming profession in India, where more and more lawyers are venturing into the laws of trademark, patents and copyrights.

Trademark Attorney

A Trademark Attorney is a person who is expert in matters relating trademark laws and designs and practices and provides legal advice regarding the matter. He is a professional having extensive knowledge of trademarks and usually deals with court cases relating to Trademark.

Qualifications

In India, any person who has taken a course of study in the rules of practice in patent office i.e. trademark laws, has graduated from a law school and is a member of bar can be a trademark attorney. The attorney must be registered to practice trademark laws before the IPAB (Intellectual Property Appellate Board) or the trademark office and must also be registered to practice law in at least one of the states in India. He must also have passed the IPAB Trademark Law Bar Exam. Many attorneys may also have technical engineering degrees and they can practice law outside the trademark office.

Role of a Trademark attorney

A trademark attorney in India assists trademark holders in every way. They not only provide guidance and counsel on registration and subsequent use of trademarks but also make sure that a trademark does not infringe upon the rights of any other. They are also hired by big corporate companies and firms to provide assistance and guidance in matters relating to trademarks of the company.

A trademark attorney helps ensure that an application is properly registered with the applicable trademark office. During this process, the attorney generally advises his or her client on the probability of the application becoming a registered trademark. Also the attorney evaluates whether any risks are involved with adopting a certain slogan, word, or logo. The attorney also helps the client to check and ensure a potential mark or name does not violate the rights of any other person or entity. If the client decides to move forward with pursuing the mark, the attorney files the application and communicates with the trademark office as needed.

In an infringement or dilution case, a trademark attorney can represent either a plaintiff or defendant. In this role, the attorney must evaluate evidence and develop a theory of his or her client’s case. Other responsibilities include preparing and filing any appropriate paperwork with the court, facilitating the discovery process, and interviewing or deposing witnesses. If the case goes to trial, the attorney represents his or her client in court. If the case is settled outside of court, the attorney usually spearheads negotiations for his or her client.

There are quite a few different trademark attorney jobs available for someone with a law degree and a background in trademark or patent law. One common type of job is at a trademark office, reviewing applications for trademarks and assisting in research for potential infringement cases. An attorney with experience on trademarks can also work with clients interested in bringing a lawsuit against another party over trademark infringement. There are also trademark attorney jobs that involve assisting clients in filling out the paperwork necessary to officially register a trademark.

There are also trademark attorney jobs for lawyers and attorneys interested in working with clients and pursuing litigation. These jobs often involve representing clients in civil lawsuits, usually in suits brought against a defendant based on claims of trademark infringement. In these cases, there are typically trademark attorney jobs available for both the plaintiff and the defendant, and lawyers working in these types of jobs specialize in understanding the requirements of proving infringement.

Some trademark attorney jobs may also include working with clients, but are not directly involved in the adversarial process of civil litigation. These jobs often involve assisting clients with filing for official trademark registration. While the assistance of a lawyer is typically not required to file for registration of a trademark, it can often be helpful to ensure that a trademark will be registered. These trademark attorney jobs usually involve working with a client, reviewing paperwork, filing for registration on behalf of a client, and following up on a registration to ensure the satisfaction of the client.

Trademark attorney and Trademark Agent

Matters of trademark in India are governed by the TRADEMARK ACT, 1999 and the Trademark rules, 2002. The act doesn’t specify anything about a trademark attorney. Thus though it is not compulsory to appoint an attorney for application of a trademark but it is always advisable to do so since a trademark attorney is specialized in matters of trademark. Another person who can be approached for matters of trademark is the Trademark Agent who is described in the Trademark Act, 1999.

There is quiet a difference between a trademark attorney and a trademark agent. Trademark attorneys are lawyers who are members of the bar whereas agents are not lawyers. An agent is registered to practice trademark law before the IPAB of trademark office. He has to have successfully passed the IPAB Trademark Office Exam or has served for four years or more as a IPAB trademark examiner before entering private trademark practice. An agent specializes in registering trademark and practices before the IPAB trademark or Trademark Office, and does not practice law outside but since attorneys are lawyers, they can practice law outside the IPAB Trademark Office. Also they can charge high fees since they can negotiate contracts and represent their clients in court which an agent cannot do as he is not an attorney and thus his fee is also average.

The difference is a technical one. A Trademark Agent may draft and file a trademark application and conduct business with the Indian IPAB or Trademark Office. Once the trademark application has been placed, the agent may track the life of the application. The attorney may represent the application in court also.
In short, a trademark agent is a non-lawyer with a qualification in the trademark arena whereas an attorney is a lawyer with qualifications in the trademark arena.

Scope in India

In India, the status of a Trademark Attorney is not a recognized one. Any lawyer having knowledge about Trademarks can be a trademark attorney. They hold no better place in the legal field than any other lawyer. And most of their work revolves around registration of trademarks. The best job a trademark attorney can get is in a law firm which deals especially in intellectual properties or in corporate firms or companies, which require attorneys to take care of their intellectual issues. There are many reputed IPR law firms in India, which employ trademark attorneys to deal with matters of trademark, patents, copyrights, geographical indications and industrial designs.

They also play the role of private consultants who provide guidance about choosing the trademark, procedure of registration, importance of registration, paper works required, information about validity, renewal and advice regarding right available in case of infringements or other problems. Litigation lawyers also represent their clients in courts in cases of trademark infringement or other violations. The court proceedings take place according to the Civil Procedure Code (CPC).

But on the whole, the job of a trademark attorney is a very lucrative one, since the field of intellectual property i.e. trademarks, patents, copyrights, geographical indications and industrial designs is a less visited one. Common people generally don’t have much knowledge or interest in this field, especially in India. Thus it is required to have good and experienced attorneys to bail the common people out of the difficulties in this field of Intellectual Property.

By Anisha Pal

For Biswajit Sarkar

Need for Patent Registration & Patent Attorneys in India

Patents are the limited exclusive rights granted by the state for the inventor for his invention. It is an acknowledgement of the inventor’s idea. It is the reward given for the truthful disclosure of the working of the invention. This right is guaranteed for a period of 20 years from the date of filing the patent application. The object of invention need to be novel or new, contain inventive step and have utility. These are the important criteria necessary to pass for anything to be patented as per the Indian Patent Act, 1970. To be novel it must not have been anticipated through any prior publication anywhere. To be inventive it need to provide some technical or economical benefit and also not obvious to a person who has expertise in that field. Moreover this invention need to be have some kind of industrial usefulness that it brings commercial success to the inventor and also useful to the people. Again it is necessary that this invention should be patentable which implies that it must belong to certain category of subjects which are eligible to be provided with patents. So we can see that the patent obtaining is a very complex process as it needs to follow all these tests perfectly. But unlike the Copyright or Trademark the invention is not conferred with a Patent once it’s been created or is in use. For getting a statutory protection like patent it is an absolute necessity to get it registered.

Why so?

In the context of patents there is a concept called public domain which can be said in simple terms as everything outside the patent protection. It consists of all those materials which are free for everyone to use or destroy. As per the Patent Act, 1970 patent is granted only as per the Act. So if a patent is not obtained it simply means the invention or whatever just goes into the public domain. In the present situations, the development of new idea is the mantra. Innovation has been added to the essentialities of human survival. If one needs to stay then one needs to bring something new. The recognition of one’s intellectual knowledge is been attributed great importance as intangible property. But for this one need the recognition of law, that too for right person and at right time. Here comes the role of patents.

A patent, by providing various legal rights upon the inventor for his inventions, safeguards him when a question of ownership or any other kinds of problem arises. The primary benefit of holding a patent is that one can control who uses the patented invention and can usually charge people to use it. Unpatented technology can be used by anyone in any way, and the inventor has no legal ground to charge for use or to prosecute users.

The benefits of having a patent include:

1.   Jurisdictional benefit: The patents are territorial in nature and hence, the applications of the patents are to be filed in the local patent offices within the territory specified by the Act, even if any one of the co-inventor is domiciled in India. Hence jurisdictional problem is avoided.

2.   Rights available:  A patent grant gives the patentee the exclusive right to make or use the patented article. He can prevent all others from making or using the patented process also. A patentee has also the right to assign the patent, grant licenses under it, or otherwise deal with it for any consideration.

3.   Exclusive : As a patent gives exclusivity, the patent holder has time to market the invention without competition making him/her able to charge higher prices

4.   Right to sue: It gives the right to initiate legal action against anyone that is making or selling, without permission, the patent holder invention.

5.   Priority in Claims: It gives one priority over third parties wanting to register their patents in countries that do not require registration.

Thus, we can see that only if an invention has been registered as patent that all these benefits accrue to the inventor. Only if these benefits are available, that a person can avail legal protection.

Brief on how patents are applied:

·         The normal procedure for the application for patent is submitting of patent application form which includes the details about the inventor, small briefing about the invention and its usefulness and also declaration that the applicant is first and true inventor or so authorized by the true inventor along with a fee.

·         Next, the patent office does a search as to whether such inventions exist anywhere else.

·         If the said search is negative, the patent office notifies applicant to submit a detailed description of the invention along with the patent claims and specifications with a fee prescribed.

·         Upon analyzing the patent claims and specifications only the patent office grants the patents.

Role of Patent Attorney:

Therefore, it is solely upon the patent claims and specifications that the patent is granted. The drafting of patent therefore, needs to be very accurate and crafty. It requires a special knowledge and experience to draft such claims. Patent attorneys are the best persons for this work as they are legal people with specified knowledge. Patent attorneys are able to appropriately place a balance between the legal requirement and the patent claim which is technical in character. The whole process of obtaining patent is very legal and complicated. Henceforth, it is crucial that the claims and so called specifications which together determines what-all- are and to –what- limit the patent is made, are drafted in very neatly. Patents Attorneys  research upon whether the invention would be patentable, draft their claims and specifications, keep track with the status of application, also make sure that there happens no procedural default, thus ensuring that the inventor is ensured with the benefit of his invention within reasonable period. 

By

S.Deepika

For Biswajit Sarkar

Trade Mark Registration: Why it is Important?

Today Brands define a man's status. People go for those brands which promise them not only good quality goods but also good status. When a man enters a room, the reasons present there judge him based on the suit he is wearing- “is it Raymond?”- The brand of his watch- “wow its RADO” - the mobile phone he is using. Brands produced a new consumer culture, where the quality and credibility of goods and services where no longer judged by the traditional way, that is by really using it but by looking at the brand name. Brands project the personality of its source, if we put it in another way brands helps the consumers in identifying the source of the product. It is precisely for this purpose brands, or if we rather use the technical term, trademarks have been created.

This concept originated in the Middle Ages when craftsmen and merchants wanted to differentiate their products or services from those offered by competitors. Thus trademark simply means identity card of a company. This very reason makes trademark the most powerful Intellectual property concept. It cost company a lot of time, money and resources to build a credible trademark in the market. Trademark may be names, like well known mobile phone brand 'NOKIA' or famous service provider 'idea' with an inverted 'i' , it may be symbols, for example 'the apple' symbol of APPLE co.. Whatever form it may have it is the most powerful communication tool a company has to communicate with its consumers. A study conducted at Columbia University found that for consumer products and services, well-managed brands typically represent 50 to 80 percentage of the entire value of their companies. For business to business products and services, the percentages were lower but still significant - 20 to 30 percentage. Thus now we are in agreement to the fact that trademark is very important for a company. This importance of trademark makes it very vulnerable too, because there is a chance of others abusing your trademark, for their profit, by playing with your credibility and reputation. Nobody wants all of his/her efforts to go in vein and again if a trademark is to be protected in all the way the law can it is important to get it registered under proper authority. If you are not willing to protect your trademark there is no need for building one. Precisely because otherwise you won't be able to enjoy any of the following rights, which you will lose only because you didn't get it registered and trademark registration becomes important due to following reasons:

• Without registration, a latecomer may register a mark identical or similar to the company's mark, which may prevent the unregistered trademark owner to expand his business to other areas with the same trade mark or may block his attempt to register the trademark later. If you cannot stop your competitor from using a trade mark which is the same as or similar to yours, then your competitor may “get a free ride” on your reputation. In many cases, a reputation is the result of having high quality goods or services, providing superior service, or an effective marketing strategy. These usually involve a significant investment in money, time, and know-how.

• Trademark registration gives the trademark holder to file cases against trade mark violations or abuse of trademark like unfair comparative advertisement.

• Trademark registration establishes the presumptive right of the trademark owner to use the trademark throughout the country.

• For those companies that wish to expand internationally, the date of registration may be used as the priority date in other countries, if they are a member of an international treaty, such as the Paris Convention.

• Discourages others from using confusingly similar marks in the first place by making the mark easy to find in a trademark availability search, thereby preventing problems before they even begin.

• Protects against registration of confusingly similar marks.

• Entitles you to certain statutory damages in case of infringement of your trademark related rights.

By registering it becomes part of your valuable asset, and you can sell it, lease it, mortgage it, and transfer it.

By Aruna A.

For Biswajit Sarkar

The Copyright Amendment Bill, 2012

The Copyright Amendment Bill, 2012 is successfully passed in the Parliament, is now waiting to be signed by the President. This bill marks a historic turning in the foster of Copyright laws in India. It introduces many pertinent changes in the Copyright laws. One of the characteristics of the Bill is that it has tried to make certain definitions. It defines commercial rental, Rights management information, visual recording.

Cinema is one of the craziest stuff that we, Indians have promoted and enjoyed a lot. Thus, the amendment with regard to the royalties payable to the music composers and lyricists is very much celebrated by the people. Right from the Oscar holder A.R.Rahman to the celebrities like Javed Akhtar & Shankar Mahadevan had struggled a lot to get this amendment pass in the Indian Legislature.  Under the former provision these music composers and lyricists didn’t have right to claim royalty equally. The problem was especially with regard to the cinematographic works or generally cinemas. The copyright for the movie either goes to its producer or its director. The lyricist and the music composers usually assign their copyright for their work to these people for the money considerations thus lacking right to claim any equal amount of royalty. Now the amended law has made eligible for the music composers and the lyricists to claim an equal share of royalties and consideration payable in case of utilization of their work.

Another interesting amendment is that to relinquish the copyright, the author may merely give a public notice. The Bill also amends that the photographs shall enjoy copyright protection as that of any artistic, literary, musical work (cheers to the photographers…). The Bill in addition enables the author to license any of his work by mere writing document not necessarily signed. Again the Bill proposes that the compulsory license shall be granted for any works rather than ‘ Indian works’ which is indeed a really good provision as it facilitates for more availability of works to the people. Another significant amendment is that it allows any person working for the benefit of persons with disability on a profit basis or for business, to apply to the Copyright Board for a compulsory license to publish any work in which copyright subsists, for the benefit of such persons. Moreover these applications need to be disposed off as soon as possible in a favorable manner. This Bill also makes a provision with regard to the cover version copies, which shall be made only after 5 years of making the original. It requires that the cover version be of same medium as the original. So if the original is on a cassette, the cover cannot be released on a CD. Also strict regulations are made like the cover version should claim it to be the cover version & not to be misleading, royalty to be paid in advance if 50, 000 copies are to be made, no alterations to be made except for the technical necessities.

This Amendment Act also inserts that every copyright society shall be registered for a period of five years and may be renewed from time to time before the end of every five years on a request in the prescribed form. This bill also elaborates more upon the performers rights like he/she can claim for royalty in case of making of the performances for commercial use; performer of a performance shall, independently of his right after assignment, either wholly or partially of his right, have the right to claim to be identified as the performer of his performance and  to restrain or claim damages in respect of any distortion, mutilation or other modification of his performance that would be prejudicial to his reputation.

Again the fair dealing provisions are now applicable to all the works and also says that the transient or incidental shortage of a work or performance purely in the technical processor electronic transmission or communication to the public or for the purpose of providing electronics links,access or integration, where such links, access or integration has not been expressly prohibited by the right holder will be an exception.This is available only till he/she who does such storage a complaint from the copyright holder alleging it to be infringement.In such a circumstance he/ she shall not use this works for a period of 21 days or till he/she gets a court order prohibiting them to continue.

Another vital provision is again to people with disabilities. The amendment act allows the use of any work or performance in any accessible format for the using it by the persons with disability on non - profit basis.Another remarkable amendment is the introduction of the provision which punishes any person who would puncture any technological measure taken to ensure the copyright for a period of 2 years.Also there has been a modification to the moral rights of the authors.Moral rights are the inherent right available exclusively to the author even after the assignment or the licensing or expiration of the copyright.The amendment has now allowed the legal representatives of the author to claim the right to claim authorship along with the other rights which was not allowed in the earlier act.

By
S.Deepika
for 
Biswajit Sarkar

Human Gene Analysis

This post is a critical comment on a recent United Kingdom Supreme Court decision, which conferred an unconventional interpretation to utility.

In, Human Genome Sciences v Eli Lilly, HGS was seeking protection for an isolated nucleic acid molecule comprising a polynucleotide sequence encoding a Neutrokine-á polypeptide. This was identifiable and isolatable. The subject matter of the patent application was a member of TNF ligand super family.  The fundamental defect to the HGS’ patent application was they were a bit in the dark as how to identify precisely the purpose of protein composition. The applicant was sure that it has its own uses but failed to assert exactly what is usage, or they were aware of the budding use of the invention, but they were not entirely sure their predictions would prove to be correct.

Article 52 of the European Patent Convention (EPC) mandated the requirement of “Susceptible to Industrial Application” for patent eligibility. The requirement explained in the UK legislation as capable of industrial or agricultural (S.4 of the Patent Act 1977) application. This case deals with the interpretation of “Susceptible to Industrial Application” (Utility) in terms of Biotechnology.

Their patent claims were silent about the industrial applicability. The inventors were in a dilemma as to the contemporary appliance of their invention. Protein structures are interpreted to tackle diseases. To state precisely this protein structure came before the  diseases being discovered. However, already identified members of TNF ligand family had shown incredible medicinal qualities. Nevertheless, current diseases did not demand the application of this invention. Future discovery of industrial applicability is a possibility. This created the whole problem to their application because “Capable of Industrial Application” means, invention must be capable of mass production and application in the market.

The court pointed out that research field is a wide market on which this invention has an industrial application. They also rejected the US cases postulated the interpretation for the same by saying that the standard of utility in the US is too high. The court said that the invention of HGS is capable of industrial application because all the other members of the family showed excellent result, and this invention may reveal its purpose in the near future. “The standard set by the Judge for susceptibility to industrial application was a more exacting one than that used by the Board. He was looking for a description that showed that a particular use for the product had actually been demonstrated, rather than that the product had plausibly been shown to be usable for the purposes of research work [Para. 151] and [Para. 154], which the Board must be taken to have regarded as an industrial activity in itself [pares. 155-156].”

The Implication of the Decision

This decision will facilitate the admission of speculative patent claims in the biotechnology field. Notional claim means the specification will postulate certain capabilities of the invention based on the qualities and known functions of the previous similar class of invention. These specifications may or may not be true. Utility has always been interpreted in relation to contemporary application. However, this decision cast away the conventional interpretation. This decision added the word “Prospective” to “Susceptible to Industrial Application." To quote, "[A]ll known members of the TNF ligand family were expressed on T-cells and were able to co-stimulate T-cell proliferation, and therefore Neutrokine-α would be expected to have a similar function." 

Biswajit Sarkar 

Patent in The USA

This post is a case comment on the much-awaited decision Mayo v Prometheus. Main question posed before the Supreme Court was "Whether the claims of Prometheus preempt patent law?" The Court, in my view delivered a promising judgment disallowing the patenting of natural laws. Personal life science invention is a growing market in US. It is likely that following days will show the positive or negative repercussions of the decision. 

The United States Supreme Court on March 20 decided unanimously that patent of Prometheus claiming methods to administer thiopurine drugs to treat autoimmune diseases is void.

Prometheus was the sole licensor of thiopurine drug “When in­gested, the body metabolizes the drugs, producing metabolites in the bloodstream. Because patients metabolize these drugs differently, doctors have found it difficult to determine whether a particular pa­tient’s dose is too high, risking harmful side effects, or too low, and so likely ineffective. The patent claims here set forth processes embody­ing researchers’ findings that identify correlations between metabo­lite levels and likely harm or ineffectiveness with precision. Each claim recites (1) an “administering” step—instructing a doctor to ad­minister the drug to his patient—(2) a “determining” step—tellingthe doctor to measure the resulting metabolite levels in the patient’s blood—and (3) a “wherein” step—describing the metabolite concen­trations above which there is a likelihood of harmful side-effects and below which it is likely that the drug dosage is ineffective, and in­forming the doctor that metabolite concentrations above or below these thresholds “indicate a need” to decrease or increase (respective­ly) the drug dosage.”

Petitioners Mayo introduced their own method, which according to Prometheus, violated their patent claims. The district court held that patent claims constituted principles of natural law, which preempts the patent law. Federal Circuit Court overturned the decision based on machine or transformation test held in Bliski v Kappos. Now the Supreme Court of the United States has affirmed the decision of the district court and held that patent claims are void.

The Court held that, “The “wherein” clauses simply tell a doctor about the relevant natural laws, adding, at most, a suggestion that they should consider the test results when making their treatment decisions. The “determining “step tells a doctor to measure patients’ metabolite levels, through whatever process the doctor wishes to use. Because methods for making such determinations were well known in the art, this step simply tells doctors to engage in well-understood, routine, conven­tional activity previously engaged in by scientists in the field. Such activity is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law.”

Section 101 of US Patent Act has an explicit exemption that “Laws of nature are not patentable.” The same idea was followed in various celebrated precedence like  Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U. S. 127, 130 (1948), Dia­mond v. Diehr, 450 U. S. 175, 185 (1981); Bilski v. Kappos, 561 U. S (2010); Diamond v. Chakrabarty, 447 U. S. 303, 309 (1980); Le Roy v. Tat­ham, 14 How. 156, 175 (1853); O’Reilly v. Morse, 15 How. 62, 112–120 (1854).

The Court in Chakrabarty held that patentable subject matter includes anything under the sun that is made by man. “Made by man” is an important criterion for patentability because the cardinal patent eligibility criterion for a “principle of natural law” is that it must have undergone substantial human intervention. The decision in Diehr is in direct relation to the facts of the case. In Diehr the claimed invention was a known mathematical formula, the Arrhenius equation, applied to identify the time to open a rubber press. The invention worked on the information about the temperature inside the mold, the time in which the rubber was inside the mold and thickness of the rubber. However, the court identified that invention as a whole had undergone substantial human intervention and hence patent eligible. To quote “installing rubber in a press, closing the mold, constantly determining the temperature of the mold, constantly re- calculating the appropriate cure time through the use of the formula and a digital computer, and automatically opening the press at the proper time” (at p.187 of Diehr)

In the present case, the court identified that the claims only reinstating a process of natural law and there is no substantial human intervention to make the invention patentable.

Biswajit Sarkar