India IP and Innovation Forum

India IP and Innovation Forum

www.managingip.com/IndiaIP2012
Regency Hyatt Hotel, New Delhi

February 28, 2012

Free for IP counsel, academics and R&D professionals

Dear Colleague:

Managing IP and Law Wire Blog invite you to the inaugural India IP & Innovation Forum on February 28, 2012 in New Delhi.

The forum provides the best platform for IP counsel, their advisers and leading officials to meet and debate the latest legal issues and practical strategies for IP owners in India, from patent prosecution to portfolio management strategies.

Easy ways to register

Visit www.managingip.com/IndiaIP2012
Email mfabri@euromoneyplc.com
Call +852 2842 6995

Agenda topics:

· Patent prosecution tips

· Defending your copy right

· US focus – recent patent reform and implications for Indian IP owners

· The Indian Patent Act and software patentability

· Litigation in life sciences – lessons learnt from recent cases

· Trade mark protection in India

· Portfolio management strategies

Speakers include:

Viswanathan Seshan, head of IP&S India, Philips Electronics India

Keshav Dhakad, director, IPR & license compliance, Microsoft India

Anshuman Sharma, country general & legal head, Novartis

R Parthasarathy, partner, Lakshmi Kumaran & Sridharan

Rajiv Chauhan, VP and general counsel, Pernod Ricard

Aravind Chinchure, assistant vice president, Reliance Industries Ltd

V Lakshmi Kumaran, managing partner, Lakshmi Kumaran & Sridharan

For more information about the agenda, please see the brochure here: http://www.managingip.com/pdfs/IndiaIP.pdf

Don’t forget that the forum is free for IP counsel. Places are allocated on a first come, first served basis, register today to secure yours.

Advisers, consultants or private practitioners can SAVE US$200 by registering before December 23, 2011.

We look forward to meeting you in February.

Kind regards,

James Nurton

Managing Editor

www.mangingip.com

Website "Means" Requires Algorithm Disclosure

In Ex parte Catlin, (U.S. PTO Bd. App. & Int. February 3, 2009)(precedential), the Board held that a method claim for implementing an on-line incentive system that recited "providing, at a merchant's web site, means for a consumer to participate in an earning activity to earn value from a merchant" was invalid for indefiniteness under 35 U.S.C. Section 112, second paragraph, where the application failed to disclose any algorithms that transformed the disclosed general purpose processor to a special purpose computer programmed to perform the disclosed functions:

According to Administrative Patent Judge Horner,

. . . we have thoroughly reviewed the Appellants' Specification and have not been able to locate an adequate disclosure of structure, material, or acts corresponding to the functions of allowing a consumer to participate in an earning activity and earn value from an earning activity. In particular, the Specification does not disclose any specific algorithm that could be implemented on a general purpose computer to allow a consumer to participate in an earning activity and earn value from an earning activity. Accordingly, the Specification fails to disclose the algorithms that transform the general purpose processor to a special purpose computer programmed to perform the disclosed functions of the first elements of claims 1, 9, and 20. The Appellant has failed to disclose any algorithm, and thus has failed to adequately describe sufficient structure, for performing the functions recited in the means elements contained in the first step of claims 1, 9, and 20 so as to render the claims definite. Accordingly, claims 1, 9, and 20, and claims 2-8, 1 1 - 19, and 2 1-25 depending therefrom, are unpatentable . . . as indefinite.

46th Annual Corporate Patent Seminar

Registration is now open for the 46th Annual Corporate Patent Seminar in Austin, Texas on November 14-16th. Past participants have included representatives from Procter & Gamble, Caterpillar, SC Johnson, Pfizer, Eli Lilly and others.

Limited to senior-level corporate counsel, the CPS is an informal group of patent professionals who exist only for the purpose of putting this seminar together. The cost is $800 per person and additional information including registration information can be found at www.corporatepatent.com

Portraits, the Father of the Nation and Intellectual Property [India]

A Division Bench of the Kerala High Court on 1 st October 2009 issued notice to the Union government, MontBlanc International GmbH, Germany, and other respondents on a writ petition that sought a ban on the marketing and sale of “Mahatma Gandhi Limited Edition 241” and “Mahatma Gandhi Limited Edition 3000” luxury pens in the country.

The Bench, comprising Chief Justice S.R. Bannurmath and Justice A.K. Basheer, issued the notice on the petition filed by Dijo Kappen, managing trustee of the Centre for Consumer Education at Pala in Kottayam.

Montblanc International, on September 29, launched a set of high-end pens priced at Rs.14 lakh each under its limited-edition series called the “Mahatma Gandhi Limited Edition-241.” The 241 pens in the series were made to signify the “241 miles” travelled by Gandhiji during the Dandi March.

The petitioner said the attempt by the pen company to market luxury pens in the name of the Mahatma Gandhi was in derogation of national honour. The Father of the Nation was considered the epitome of simplicity and making him the symbol of a pen that cost Rs.14 lakh was nothing but an attempt to degrade everything he stood for, and to mock a nation of middle-class and below-the-poverty-line persons who look up to him and whom he tried to liberate.

Mahatma Gandhi wrote "I have no copyright in my portraits but I am unable to give the consent you require." in May 1931, in response to a manufacturer who wanted to use his portrait in roofing tiles. Nearly four score years on, an international luxury brand wants to do precisely what Gandhi expressly bid against - use his portrait in the manufacture of prohibitively expensive, limited edition pens.

As it has turned out, within days of announcing the launch of Montblanc's limited edition pens commemorating the 140th birth anniversary of MK Gandhi, the German premium pen maker has been issued a notice by the Kerala High Court on a writ petition seeking a ban on the marketing and sale of these pens.

Specifically, the petition draws attention to Section 3 of the Emblems and Names (Prevention of Improper Use) Act, 1950 (download link), under which "no person shall, except in such cases and under such conditions as may be prescribed by the Central Government, use , or continue to use, for the purpose of any trade, business or calling or profession, or in the title of any patent, or in any trademark or design, any name or emblem specified in the Schedule or any colourable imitation thereof without the previous permission of the Central government".

Further, Entry 9A of the Schedule to the Act lists “the name or pictorial representation of Mahatma Gandhi” as an item that categorically cannot be used for the purpose of any trade, business or profession under the provisions of the Act. The petition argues that "Mahatma Gandhi is considered as the epitome of simplicity"... and "Making him the symbol of a 14 lakh pen is nothing but an attempt to degrade everything that Gandhiji symbolised, and to mock a nation of middle class and individuals below the poverty line who look up to him and who he tried to liberate."
"Gandhi's great-grandson Tushar Gandhi has endorsed the idea. His charitable foundation has already received a donation of $145,000 from Montblanc and will receive between $200 and $1,000 for each pen sold." Tushar Gandhi is reported to have announced at the pen launch that “It’s a pen which Gandhiji always associated with, it was his greatest tool. Also the donation is for an Indian Trust,which is for the good of the Society.”
The petition counters that the Rs 70-lakh donation received by the Kolhapur-based charitable trust, and Tushar Gandhi's subsequent comment is nothing but a "mischievous statement intended to give an impression that the Mahatma used Mont Blanc pens."
Tushar Gandhi seems to the only man standing in the Gandhi family in his endorsement of the brand. In an overnight response to the launch, the Mahatma's governor-grandson, Gopalkrishna Gandhi, has written a moving piece of his grandfather's relationship with the pen and the act of writing. Here, he recalls the story of the tile manufacturer quoted at the top of this note, as also other anecdotes which clearly suggest that Gandhi himself would have objected to the use of his portrait in this manner, were he alive today.
Meanwhile, Montblanc executives appear to be flummoxed: In an interview with the BBC,the company's chief executive Lutz Bethge stated that the pen was intended to honour Gandhi, and he "wouldn't have thought that people would have reacted negatively"

Ta Ta, WIPO. New Candidate for Worst UDRP Decision Ever [WIPO]

An Indian company is taking a domain battle to court after a WIPO domain panelist handed its domain owner to conglomerate Tata Sons. The domain at issue is OKTaTaByeBye.com, a travel web site based on the colloquial saying “Ta Ta”, as in bye-bye or see you later. OKTaTaByeBye.com is run by a large online travel company that operates MakeMyTrip.com.

TaTa Sons stated in its complaint that “the Respondent has not shown any demonstrable preparation to use the domain name in connection with a bona fide offering of goods and services.”

OKTaTaByeBye refuted that in its response, stating that the site is a travel journal and community site. A look at historical DomainTools thumbnails shows that the site has been operating since at least 2006 with active traveler discussion boards.

But the response by WIPO panelist Pavan Duggal is almost humorous in nature. Despite the overwhelming evidence presented by OKTaTaByeBye.com that it is a legitimate, online travel community, Duggal focuses on on how the site links back to the company’s MakeMyTrip.com site, where people can book trips online. This, according to Duggal, shows that OKTaTaByeBye.com is actually trying to use TaTa’s trademark to “fish” for new customers to its MakeMyTrip.com site. Apparently operating an online travel community that supports a related web site is not OK.

The company is discussing the fight on its blog in a post that has received 1,256 comments.

Courtesy: Domain Name Wire

Reliance withdraws GI tag applications for Jamnagar and KG Gas [India]

Reliance Industries Ltd, the nation's most valued company, has withdrawn applications to register the terms, 'Jamnagar' and 'Krishna Godavari', as geographical indication (GI) tags for its petro products. The Mukesh Ambani-led RIL had sought the GI tag for five products, four with a prefix of 'Jamnagar' and one for Krishna Godavari Gas.

The company has now 'withdrawn' its applications for four products, including Jamnagar Petrol, Jamnagar Fuel, Jamnagar LPG and Jamnagar Diesel, while request for the registration ofKrishra Godavari Gas has been 'abandoned', a senior official from Chennai-based Geographical Indication Registry told PTI. RIL, however, declined to comment on the issue. The GI is a sign used on goods that have a specific geographical origin and possess qualities, reputation or characteristics that are essentially attributable to that region.

A GI status provides legal protection and facilitates for action in case of infringement. Further, it promotes economic prosperity of producers in a particular area. GIs are covered as an element of Intellectual Property Rights. GL Verma, Assistant Registrar of Trade Marks & GI, said the applications of RIL for the term Jamnagar was facing opposition and now the company had withdrawn its applications. RIL has withdrawn its GI applications exactly after four years of filing. The company had filed its applications for these products on September 15, 2005, as per the details with the office of Geographical Indications. Controller General of Patents, Designs & Trade Marks also confirmed the withdrawal and abandonment of applications.

Under the Geographical Indications of Goods (Registration and Protection) Act, 1999, the GI office functions under the Controller General of Patents, Designs, and Trade Marks. RIL had filed applications under class 4 of Geographical Indications of Goods (Registration and Protection) Act, 1999. Class 4 of the Act deals with products for industrial oils and greases, lubricants, dust absorbing, wetting and binding compositions, fuels (including motor spirit) and illuminants,candles and wicks. The GI status for the products with Jamnagar prefix was sought for the geographical areas of Gujarat, whereas the tag for Krishna Godavari Gas was for Andhra Pradesh. "The decision in this case is a standard practice," Rodney D Ryder, an intellectual property law expert at Delhi-based legal firm Kochhar & Co, said. In past, the GI tag has been awarded to a number of products or goods such as the famous Darjeeling Tea, Madhubani Paintings, Kashmiri Sozani Craft and Thanjavur Painting.

Japan topples US in number of patents issued: UN agency

Japan granted the maximum number of patents in 2007 and has replaced the United States from number one position, a status it was enjoying for nearly adecade, a UN agency report says. "The USPTO (United States Patent and Trademark Office), which has issued the highest number of patents since 1998, was overtaken in 2007 by the patent office of Japan," the World Intellectual Property Organisation (WIPO) said in a statement today.

Geneva-based WIPO is a specialised agency of the United Nations for developing a balanced and accessible international system in the field of intellectual property rights. Further, the patent office of China has replaced the EPO (European Patent Office) as the fourth largest office in terms of issuing grants, WIPO said in its report titled the "World Intellectual Property Indicators 2009." The report is based on 2007 figures, the last year for which complete worldwide statistics are available, WIPO said. In 2007, Japan granted 1.64 lakh patents, whereas in USA the number was 1.57 lakh. The total number of granted patent in that year stands at 18.5 lakh. In terms of patent filing, the report said Patent offices of India, Brazil and Mexico, received a significant number of filings, report stated. Trends in intellectual property activity shows that demand for IP rights continued to increase prior to the onset of the global economic crisis, it said.

Banarasi Silk receives GI rights [India]

Banarasi silk products have been registered under Geographical Indication (GI) rights with the name ‘Banaras Brocades and Sarees’. This is the first ever GI status that any product in Eastern UP has received. Malihabadi Dussehri mango is another product that is enjoying GI status in the state of Uttar Pradesh. The GI rights curb others from processing or marketing any product under the same name and are as good as intellectual property rights. The GI certificate for Banarasi silk products have been received by the office of Assistant Director (Handloom) and other applicants.

The certificate will prove to be advantageous for the exporters and consumers, along with the handloom weavers, said Mr. Rajni Kant, President, Human Welfare Association (HWA) who is also one of the applicants.As GI status is the measure to restrict the misuse of Banarasi sari brand, it would benefit around 12 lakh people who are directly or indirectly associated with handloom silk industry of the region. According to the certificate issued by the registrar of GI, Banaras Brocades and Sarees come under four classes (13-26) that include silk brocades, textile goods, silk saree, dress material and silk embroidery. This registration is for 10 years, which can be renewed further. Organizations such as UK based Find Your Feet, Department for International Development and United Nations Conference on Trade and Development (UNCTAD) India offered support to secure the GI status, said Mr. Kant. Nine organizations had applied for the GI registration of world famous Banarasi saree and brocade, to the Chennai-based Geographical Indication Registry in July 2007 and they received the GI status on September 4 this year, nearly after two years.

The nine organizations were, Banaras Bunkar Samiti , Human Welfare Association (HWA), joint director industries (eastern zone), director of handlooms and textiles Uttar Pradesh Handloom Fabrics Marketing Cooperative Federation, Eastern UP Exporters Association (EUPEA), Banarasi Vastra Udyog Sangh, Banaras Hath Kargha Vikas Samiti and Adarsh Silk Bunkar Sahkari Samiti. Banaras, which is among the premier weaving centres in the country, is very popular for its glamorous, colourful and exclusive varieties of saris such as Jangla, Tanchoi, Vaskat, Cutwork, Tissu and Butidar, and also for brocade and dress materials.

Record companies sue 'Ellen' show over copyrights [United States]

Some of the world's largest recording companies are suing "The Ellen DeGeneres Show," claiming producers violated their copyrights by playing more than 1,000 songs without permission.

Many of the songs were played during the "dance over" segment of the show, when DeGeneres dances from the stage to the interview area, often through the audience.
According to the suit filed Wednesday in U.S. District Court in Nashville, when representatives of the recording companies asked defendants why they hadn't obtained licenses to use the songs, defendants said they didn't "roll that way."

"As sophisticated consumers of music, Defendants knew full well that, regardless of the way they rolled, under the Copyright Act, and under state law for the pre-1972 recordings, they needed a license to use the sound recordings lawfully," the suit states.

Scott Rowe, spokesman for the show's Telepictures Productions, wrote in an e-mailed statement that the company has been working with the record labels for months to resolve the issue and remains willing to resolve it on "amicable and reasonable terms."

Rowe said the issue does not involve DeGeneres, who on Wednesday was named as the fourth judge on TV's "American Idol," and whom Rowe calls "a tremendous music enthusiast and advocate."

The suit claims the daytime talk show has used copyrighted music without permission since its inception, including "recordings by virtually every major current artist of popular music." It claims the show routinely used some of the most popular songs of the day, which the record labels don't license for daytime television at any price.

Other songs cited in the lawsuit include Michael Jackson's "Thriller"; The Beach Boys' "Good Vibrations" and Will Smith's "Gettin' Jiggy Wit It."
The suit calls the segment and the music played by the show's own disc jockey "signature elements of the show."

Plaintiffs include Arista Music, Atlantic Recording Corp., Capitol Records, Motown Record Company, Sony Music Entertainment, Virgin Records America and Warner Bros. Records.
The suit does not specify the dollar amount it seeks in damages.

Nilekani acknowledges security and privacy concerns over the UID [India - Data Protection/Privacy]

Nandan Nilekani conceded that there are “legitimate” apprehensions over the proposed Unique Identification Number database’s being vulnerable to hacking and misuse. He said that given the inclusivity, enormous opportunity and developmental benefits it will provide, Unique Identification Database (UID) project is worth the risks.

Mr. Nilekani, the chairman of Unique Identification Authority of India told Karan Thapar on CNN-IBN’s Devil’s Advocate program that the project had so many significant benefits for the poor in making it inclusive and in giving them a chance to participate in the country’s progress.To question on the possibility of the database being hacked, he said that they would have to design it as foolproof as possible by incorporating checks and balances. After saying “in every system, there will be people who will try to hack on it,” he asked if the security risks it involves are enough to do away with the project.

Responding to a question about the worthiness of spending an amount as huge as Rs 1.5 lakh crore in a country where 80 per cent of the population live under Rs 20 a day, Mr Nilkani rejected the estimation although he couldn’t spell out the exact amount. “Whatever the cost be, the social, economic and efficiency benefits of it would make it well worth it,” he said. The investment in this project would actually make all those other money be spent on education, health for women and children and sanitation programmes more efficiently. When asked whether the project will be helpful in solving the irregularities relating to the allotment of BPL cards as it can’t identify those who should have BPL cards and do not, replied that UID is not a panacea for all the problems but an enabler of more effective public delivery.

WIPO and Singapore Partner in the Field of Alternative Dispute Resolution [International]

An agreement signed by Mr. Francis Gurry, Director General of the World Intellectual Property Organization (WIPO), and Mr. K Shanmugam, Minister for Law and Second Minister for Home Affairs, has paved the way for the establishment of the Singapore Office of the WIPO Arbitration and Mediation Center (WIPO Center), which will officially open in January 2010.

Delhi HC rejects Syngenta plea on molecule registration

The Delhi High Court has dismissed a petition by multinational chemicals giant Syngenta challenging the government's decision to allow rival firm Crystal Phosphates to import a key insecticide and sell in India, currently exclusively sold here by the MNC.

A single-member Bench of Justice S Ravindra Bhatt dismissed Syngenta's petition, observing that the plea filed by the Swiss MNC was "speculative" in nature and the court could not intervene in the government's policy decision.

"The court is of the opinion that the litigation was speculative as the attempt was clearly to invite the court to make a policy declaration, which could not have been made under any circumstances," said Justice Bhatt, dismissing the Swiss MNC's petition.

The court also imposed a cost of Rs 3.75 lakh and directed it to pay to Crystal within four weeks.
In its petition, the Swiss firm had challenged the decision of a committee of the Ministry of Agriculture to grant the registration of insecticide molecule Emammectin Benzoate (five per cent) SG to Chrystal on a host of issues including an abridgement of its intellectual property rights.

Emammectin Benzoate is used in a number of crops, including sugarcane, cotton and wheat. Currently, only Syngenta is selling this insecticide in India.

A Syngenta spokesperson said the company may move the Supreme Court against this verdict.