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  • Namrata Pahwa

The Ambiguous Grey Zones

It’s been 63 years since the first IP Act was introduced in India (Copyright Act, 1957). After several amendments, introductions of newer Acts in the Country, the Government has undertaken a massive digitisation exercise, recruiting a large number of examiners leading to an exponential increase in the examination and grant of IP. To encourage start-ups to seek protection of their IP and to file patent applications, facilitators have been appointed.


However, practicing lawyers still find it difficult to get a comprehensive IP protection for their clients in terms of Copyright, Design and Patent as many of the actions have not yet translated into concrete benefits for innovators and creators, and long-standing deficiencies persist. India remains one of the world's most challenging major economies with respect to protection and enforcement of IP.

While I understand that everything cannot be chartered out in a few Acts and that’s where the lawyers work begins – in Interpretation of the Law, here are a few things that, in my opinion, could do with a little upkeep!

Copyright:


The improvement of the national culture heritage depends on the level of protection given to literary, musical, dramatic and artistic works; cinematography films and sound recordings. The higher the protection level the more number of people are encouraged to create something.

Now, in US and UK, there exists tests - audience test, pattern test, abstraction filtration comparison test, total concept and free test; for checking infringement as opposed to India that only follows the substantive test.


The Issue of Public Vs Private Use on the Internet

Under traditional copyright laws, especially the act of 1957, there is a distinction provided between the reproduction of particular content in public and private domains. This distinction allows a person to reproduce copies of copyrighted content in the public domain, with prior permission from the author or original creator. However, the cyberspace makes such distinction difficult. Since one person can transfer material to several people through the internet, the copyright laws regarding public and private spaces have become difficult.

The right of reproduction is a huge issue on the internet. Distribution of any material over the internet requires the material to be reproduced. Data through the internet is transferred using a technique wherein there is a breakdown in the entire information into small packets. These small packets are then reconstituted to form the entire matter. This technique is called “packet switching”. Packet Switching therefore means that there is reproduction at every stage of transmission of data through a computer. This makes it difficult to have a clear cut idea about the exact rights of reproduction and can be misused in cases of breach.

Therefore India needs to embrace a few provisions of treaties like WIPO internet treaties. Online licensing could be a great idea to prevent online piracy and data infringement. Online licensing helps beat technology with technology itself. An efficient online licensing system would help regain the confidence of customers as wells reduce the chances of falling victim to online piracy.

Design:

Copyright Act provides that copyright shall not subsist in any design which is registered under the Designs Act. Any subject matter that is capable of being registered under the Designs Act will lose copyright protection as soon as any article to which the design has been applied has been reproduced more than 50 times through an industrial process. This provision not only discourages parties from availing of protection under both acts, but also ensures that anyone attempting to do so has both sets of rights extinguished.

This underlines the fact that not all commercially exploited artistic works can be placed in the same category as common industrial designs, and that each variation/iteration is registered as a precondition to claiming protection. South Africa has specific provisions on spare parts – which may have both aesthetic and functional attributes – which provide clarity on the scope of protection available to rights holders. Thus, a few well-chosen changes to the Indian regime could boost the often overlooked and underrated design right.

The design laws of many jurisdictions are evolving to address the concerns of creators and innovators. The legislature should further take note of trends in case law and consider updating Indian design law accordingly. For instance, certain unregistered designs are afforded protection for a limited period in the United Kingdom and the European Union. – Like a Design and Utility Patent.


Geographical Indication:


How do you protect the IP of local artisans? This is probably one of the most asked questions in today’s time.


GI in relation to goods, means an indication which identifies such goods as agricultural goods, natural goods or manufactured goods as originating, or manufactured in the territory of a country, or a region or a locality in that territory, where a given quality, reputation or other characteristic of such goods is essentially attributable to its geographical origin and in case where such goods are manufactured goods one of the activities of either the production or of processing or preparation of the goods concerned takes place in such territory, region or locality, as the case may be.

Post-registration protection entails three aspects to be given proper treatment:

1. Making producers aware about the need for registration as authorized users.

2. Making consumer base aware about the authenticity of GI registered goods.

3. Setting up quality control mechanism for goods.

GI Tags and GI Panchayats are braving the way forward. Like for example, the villagers assemble under the banner of traditional panchayats to discuss a range of issues, the GI panchayats similarly bring together farmers, artisans and other villagers associated with GI products in the area. Here they are informed about things like how with middlemen, their products are sold at inflates prices by the time they make their way from the farmer or the artisan to the consumer.

Patent:


Apart from the global patentability requirements for inventions to have novelty, inventive step and industrial applicability, the Indian patent act has specific provisions, covered under Section 3, that makes the patentability of an invention relating to subject matter such as a) derivatives of a pharmaceutical drug; b) patentability of stem cells; c) diagnostic methods and kits; d) isolated DNA sequences; e) computer-related inventions etc. non-patentable subject matter. As a result, these inventions face a higher threshold of examination and scrutiny. Though guidelines in relation to the patentability of software, biotech inventions and pharmaceutical inventions have been issued by the Indian Patent Office, the practical challenges outlined below continue to be faced by patent holders.


a) Computer-related inventions

Section 3(k) bars patentability of computer programs per se or algorithms. This objection exists as default for all computer-related inventions. The decision in such cases is not consistent with different controllers (at the patent office) forming their own views in terms of the requirement of hardware and if it must meet the patentability criteria.


b) Patentability in the life sciences/ biotechnology sector

The life sciences sector faces hurdles in terms of patentability of in-vitro diagnostic methods and kits because they fall within the category of diagnostic/treatment methods. Further, isolated DNA sequences are also the subject of objections for not satisfying the novelty requirement. Thus, the patentee in such cases faces problems in convincing the controller of the patentability of the subject matter.


But unlike the UK, there is no provision in the law to allow for the amendment of the patent during litigation (Section 75 of the UK Patents Act) or to enforce a partially valid patent (Section 63 of the UK Patents Act). It will be appreciated that this decision may severely impact litigation by patent owners as it appears that they can no longer rely on fallback positions in the dependent claims if the independent claim is held to be invalid.

Although Indian IP law is thorough and generally comparable with European IP laws, there are still significant concerns over IP enforcement. A major cause for concern in enforcement is bureaucratic delay, with a backlog of cases at both the civil and criminal courts. This means that cases can run for five years or more. There is also a lack of transparency, particularly at a local level. A significant feature of the IP environment in India is the large number of small players infringing IP rights. This means that seizures tend to be small, which requires a sustained and financially draining effort in order to make an impact.


If India strives to become USD 5 trillion economy by 2024-25, innovation will play a key role. The Indian government must work to address the procedural and substantive challenges faced by IP holders.

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