Class notes

Topic

IP-

intellectual because it emanates from the mind but controversial now with the
advent of AI.

chattel, goods + immovable (land)

1. patents-

some countries have just one covering it- UK- IP Code. they are diff aspects of
human creativity and invention, that is why they have been segregated.

2. creative works = copyright

3. industrial copyright = protects the outwardly appearance of the product. is the

design dictated by function or visually ? (then protected by industrial design)
functionality and technical elements not protected- it is protected by patent

4. semi conductor chips- diff distinction given- it is not a complete circuit board,
these chips have core essential fucntioning in computing. they are designed in
a unique way through the process of fabrication. many countries do not even
know how to, india just starting. they cannot be seen through the naked eye-
but they have layers with transistors etc. they help in processing. the
topography of each of this layers- those determine how the chip is going to
function. chip protection is a sui generis law- japan, uk, india followed up. why
cannot it be protected thru copyright? it is too lomg, you cannot protect
functionality. patent is for technical functions but not for topography, it is
merely for artistic functions. because of the specifity of the subject matter, it is
a sui generis law in india.

5. plant variety protection- sui generis. plants are protected by patens in many
countires, not in india- it came out with a sui generis law. you use both
conventional and modern methods such bio tech, genome edeiitng- you come
up wiht new varities in horticulture and agri- you can come up with your own

Class notes 1
 variety by choosing your own varieties. a breeding industry has been
establishing. farmers rights act. india is senstiive to farmer issues, we wanted
to balance rights and come up with a sui generis law.

6. trademark law- distinct from perspective of public policy reason. functions

work on the premise that there is some sort of incentive needed for new
functions, it is driven totally by the fact that there could be market failure if it is
not protected. trade incentives- economics of IP. TRADEMARKS and GIs have
a different reasoning. consumers are protected from being deceived- the
underlying pub policy basis is that ofc ya we protect the rights of the traders,
goodwill etc.- but the major PP decision is that consumers must not be
deceived. similar case for GI- but trademarks are priv prop rights, GI-
collective private prop, they are not public bec then everyone would be
allowed to use. they are distinctly owned by private collectives. the underlying
for the 5 laws is incentive but for TD and GI is info symmetry in the market.
there is an info assymetry bec the producer and the consumer cannot interact
and to reduce the info asymmetries- these laws are the ones.

7. trade secret law- it is not a property kind of right, its a tort of unfair
competition. in a prop kind of right- they operate against the whole world,
rights in rem. they may have some attributes but dont operate that way. why- if
i am a holder of a trade secret, i can protect it in 2 major ways- if it is a trade
secret, i dont need to disclose it. govt recongises my monopoly for 20 years.
as long as i can keep it secret and it has commerical value- you have a remedy
against the misappropriater, bec of the standing of the parties, it is assumed
that the other party cannot disclose. but a breach of trust can be initiated even
tho there is no contract. but if the third party benefits out of this- no but there
are some exceptions- to what extent was there knowledge, due diligence
extent, etc. very limited liab on third party but essentially it is person. could
coke sue pepsi? no bec pepsi did not misappropriate trade secret by
poaching. started indpendently using reverse engineering. TSL is not codified.
latest law commission recommends have a codified regime bec u cannot rely
on judisicary to grant remedy, it is a private contractual agreement- it is done
by arb etc. in case of breach of confidence- we need a codified law. but-
countries like uk- rely on judge made remedies, breach of confidence has a
judge created remedy.

Class notes 2
 8. biotech tools are used to ride the bio diversity rich countries of thr south-
history of indigenous tribes, medicine etc. western companies are not going to
engage in exploration. instead, they would go by the exisiting traditional
knowledge in society. the biological diveristy act- provisions, when u file IPR
for underlying things, you need permission for patent. FEBS fair and equal
benefit share. if the tribe / community is identifiable money goes there
otherwise it is kept as a fund. comes from CBD convention on biological
diveristy. anti misappropriation regime for preventing bio piracy. bec west has
tech to free ride on our knowledge.

8 categories of IP Law. there are varying categories of protection and rights.

1. criteria of protection

2. criteria of subject matter

3. once these 2 things are clear, you should know how to get this right.
acquisition of IP. reg is optional but in case of patent, there is a strong
examination process. similar for TM, GI. The acquisition process is another
conceptual category to understand the law

4. acquisition process- application till grant. you are granted rights which is the
4th conceptual category.

5. if there are rights, they can be infringed. how do you understand the
infrignements? there are tests.

6. if there are rights, you are allowed to transact IP- substantive and procedural
aspects as to how you alienate IP. Sale and licensing whihc is permission to
use. Transactional IP

7. Defences- fair dealiing, fare use etc. this is done to balance out rights and
create clarity on what is allowed.

8. if you dont fall in defences, then comes the remedy. can be civil or criminal,
other kinds of civil measures such as customs etc. customs act has provisions
whihc can help IP infrignemnt when goods are being imported into your

Class notes 3
 borders. civil- injundction which is an equitable remedy, accounts of profits,
damages. aciciliary civil remdies- the machine itself can be taken away.

9. public interest- for eg covid where the govt wants to amrch into ur prop rights
and allow someone else to make a manufacturer without ur permission- bec
the interest of the public is paramount- compulsory licenses. where the govt
interevenes and says that a voluntary transaction is not working out anymore.
it is a forced contract imposed by the govt on the IP holder. it can also
forcefully acquire ur prop rights under eminent domain.

10. lastly, interface of IP with comp law, const law, IBC, etc. not required for us.

why are TL and GI not limited? the underlying theory of info assymetry creeps in.
therefore, it is not limited in duration.

02.08.2024
Historical Origins of IP

s66 of patens act- words used are “generally prejudicial” etc.- those words
today are not find in any comparative statutes across jurisdictions. if you go
back to the previos UK statutes and go to its origin in 1623, when 1st patents
statute was enacted, you will see exactly similar words. if you want to find the
meaning of these words, you cannot find them here immediately- will be found
in their legal history. several reasons why we have not repealed it. from a legal
perspective- it becomes imp to know the evolutionary perspective- if the
words would mean anything else- have to construe the words harmoniously.

coming to music- kings and queens patronised them. problem in this system-
decision making, how does the king know? modern copyright music runs on
market functions- you like you pay. then it used to depend on discretion of
king to patronise. vertical patronage has the problem of subjectivity. ramdhari
singh dhinkar- why is copyright so essential to democracy? it gives the power
of free expression to people who want to really convey their thoughts- takes

Class notes 4
 away the arbitrary decision making of the state. CR is an evolution from 2
perspectives- 1. to remove this sense of arbitrariness 2. evolution of
technology.

printing press- gutenberg, started printing archival works. 2 problems- 1.

compensation but minor problem 2. major prob- problem of offending the
monarch and the church. formula devised- printing for monopoly- stationers
company- required to grant permissions to print and publish, acted as a
censoring and approving authority. CR was not as much as an incentive
problem but more of a censorship problem. over a period of time- the
discretion granted to this company was questioned. by 17th century, system of
parliament being formed and more democratic values coming into UK. They
had to abolish this system and come with a modern system. by this kind of
discretion granted was to be removed. societal dynamics also changed by this
time- 1710 statute of ann was enacted. one of the major problems- the
stationers company claimed that CPR has to be in perpetuity- if they had
printed and published something, for times to come, there would be no other
publisher who could print and publish the same material. the monopoly then
becomes limited and no public policy justification- the prices become
artificially higher to without CR there would be multiple people putting books in
the market, more supply and lesser prices. if there is IP, competitor not
allowed to enter, no need to produce in large number. you sell only limited
amount of output. statute of ann limited this- it was 14 years.

miller vs taylor and ronaldo vs beckit- whether there is a common law CR in

perpetuity? courts came to a conclusion, if there is a statute enacted by the P-
the common law CR gets extinguished. what could be the potential reason for
amendments? 1. although previously CR started with protecting printed literary
works, it expanded to other kinds of works.- musical composition was sought
to be protected through notes. other challenges by tech- lithiography which
could replicate the original paintings done by artists. then, photography, sound
recordings. the tech evolution led to expansion of CR subject matter on one
hand and also the problem was - how many years do we protect these works?
this decision was rather arbitrary. going thru british history- clear that
macaulay was the one to put this life thing to generations- life + 50 years,
makes it generational by allowing legal representatives to enjoy the benefits.
the idea seemed to be that there is a longer shelf live for literary kinds of

Class notes 5
 works. even today we enjoy old songs and musics. even the soc at that point
in time- labour was being alienated and people who were making products
were earning more than those involved in creativity and intellectual busienss.
kept getting extended, india has life plus 60. in some cases, bec of the nature
of tech, they sought to limit the protection life of photographs. in other cases-
question of intellectual inputs being provided and question of investment- who
owns a movie? should it be the director or producer? in indian law- producer is
consdered bec he is outting the money and taking the risk. therefore- risk
becomes the factor in providing notional authorship.

naother reason why it is recongised- equity. gert before this. prob- too many
authors, less risk takers. how many really want to take the risk? they will
always have the upper hand. at least if u provide the ntoion of authoriship and
that they can depart ownership- there will be some form of remuneration
flowing back. javed akhtar- they should get equitable remuneration and not
lump sump. litigating, HC contradictiroy jmts. right to schnyonixation in
question.

2 imp provisions enacted- in the internet context u need protection against

copying and breaking tech protection measures, some pdfs u cannot - they
were made civil crimes.

consumer asymmetries must be addressed.

in patent system- the problem was with handicrafts, new technical ways of
doing something. much larger problems started arising, glass making and ship
building where large tech inputs started going into- they started with
rudimentary privileges being granted who come out with these forms of
inventions. exlcusivity was provided to these people for 5, 7 years. while
venice and parts of continental europe was progressing- 15/16th century india
was economically backward. they said whoever brings tech to uk- they will be
granted letters patents- it is something you can. letters closed- king used to
grant a farmaan, announcing it to the realm, hence letters patent- open to all to
see. the question was, why bringing anyone in the real- it does not need to be
true and first inventor, could be anyone, copied tech and came first to UK and
the privilege would be granted. if england would wait for true and first, they
would just not turn up, including for political reasons. these privileges were
granted on day to day items- darcy vs allen where the court expressed very

Class notes 6
 strong opinions as to how without examining the newness involved could the
privilege be granted? court said cannot do anything about it, no statute. if the
monarch has not expressed- the court expressed inability to grant remedy. by
the end of 1500s- a lot of traders started protesting against these grant of
privileges- by the time the parliamentary form of democracy came- in early
17th century thy formed commitees, statue of 1624- statute of monopolies. the
first line of statute- all monopolies banned. then they made an exeption to
patents bec u still need a system of incentives- section 6- trying to move from
a privleged based system to a modern system of patens with a new way of
granting patents. finer details- it first recognised true and first inventors, then
it recongised what kind of patents were to be recognised and novelty has a
concept was condified, then they had provisions wherien they said that if they
find that the prices are being raised and are generally inconvient to the public-
they will take the rights granted to these inventors. this began the modern
patent system. earlier, you were not even required to submit models- then
models are submitted. then question of written desciprtion came in patent
application. similarly, the courts evolved inventive steps- but u cannot
question the degree of qualitivate jump btw what is existing and what is the
invention. industiral application- tech must be able to put into practice, real
world contect, it must have real world application- cannot claim anything
abstract.

05.08

get first 5 min

bec these are property rights- we have rights to exclude others.

get from here also

one of the things- if I have a smartphone, you and I cannot use it

simultaneously, at the same time. in case of land, chattel- there is rivalry in
consumption. In case of knowledge- it can be consumed by you without any

Class notes 7
 rivalry- it is non rivalrous in consumption. either one of us is not depleting the
opportunity of the other. while, tangible objects are all rival in character and
consumption. second distinct characteristic- If I have a pen and I give it to
you- i can take it back in my possession. You are dispossed from what you are
possessing. in case of knowledge- I cannot disposses you from this
knowledge. non excludable characteristic- I cannot exclude as opposed to
tangible products.

IP exists to exclude some and include some. it works for consumption but
there is a production problem- why?- if this lecture has to be delivered,
somebody has to be paid and create those lectures, expend intellectual capital
in it. In terms of production, it does not become a public good. It remains
private. price and access are facets of the same coin. higher price, lower
access.

why not abolish IP then? incentive thesis major thesis and secondly was the
consumer symmetry. what happens if there is no incentive? no incentive to
create new knowledge, no new products, society will be saturated with
existing products.

3 features

1. lockein theory- theorised property rights based on natural law principles

2. hegel and kant- they justified property rights based on personality-

metaphysical conception of what human beings are and how do we
accumulate and acquire property

3. marx and engels- it is not to justify property, he is anti property

not all of them on IP, they spoke on private propert rights in land and chattels.
these are later developments when IP became more central to the economic
system and people started writing about it. the commodity itself was more
valuable than the underlying information that creates it. post the industrial
revolution is when this analysis started thats why these people missed out on
theorising it.

Locke- fruit of the labour- if I labour, property can be justified as a fruit of that
labour. how do you justify it? his hypothesis comes from him being a christian-
god has given everything to the world in common- res communes. if

Class notes 8
 eveyrthing in common, how is it that indv get to properitse and make it their
own. to that extent- i can apply what is common to the duirt of my kabour.
problme- how much can you extract?

1. principle of abundance- whenever you extract something and apply labour

and take from the commons- there must be as good left in the commons for
others. this means that there must be equal opportunity for people to apply the
labour and also extract in the same way you are. you cannot have a situation
where you are able to monopolise the tools of applying labour and extracting
the fruit of the labour. in some sense- there must be opportunity.

2. principle of spoilage- you can take only as much where you dont spoil the
fruits of your own labor. if there is spoilage- it is not justified then. destitution-
there must be some way for the person who accumulates to share it in charity,
not through eminent domian. chairty is [Link] are not entitled to what
you are spoling. the idea that you apply so much labour and spoil it is not
justifiable.

the law must be structured in a way that these two things do not happen. locke
does not believe in redistribution- locke does. in that sense- locke is a deontoligst
and marx is a consequentialist. for locke- it does not matter and gives a destitution
example- as long as the rules of the game are applied.

On applying this to IP, there are distinct consequences. ideas are not protected by
copyright, only expression is- idea expression dichotomy. in case of patents-
there is a problem- they are constructed as property rights, the first to file the
patent gets rights over all those including those who have indenpendely innovated
the same thing unless u show u are the true and first invenotr. even if u were, you
did not disclose it. independent innvoation is not a patent defence. if two people
were to be granted on the same thing, there is a problem. patents dont remain
exclusive monopoly then. different in case of copyright primarily bec of the nature
of the work- in case of inventions, exact sciences- the level of similarity you would
find in two inventions would largely be the same- 1 plus 1 is the same for everyone.
in case of intellectual creativivty- there are different ways of writing the same
thing. science on the other hand is precise, strict process coming out with the

Class notes 9
 same end product. copyright- sheer coincidnece you end up writing the same
thing

second problem is of abundance- you apply a situation to IP where it is an

intermediary technology used by multiple people- CRISPR gene editing tool. now,
this is a general purpose tech which can be used for any kind of gene editing. if u
have taken property rights on the tools, there are multiple people with access to
the tools. CRISPR is not consumed by any of us but we end up using the end
products- can you apply the principle of spoilage if there is no license / broader
license?

rational choice theory- if i have justiifation not to license you, how do i make a
counter argument?

would the societty benefit from licensing or not? no final answers as we do not
have perfect answers- how close are you to research and the desing. unless we
have the perfect information we cannot evaluate the net harm and spoilage.

Nozick- locke theory can be used in IP as justification but one problem remains
whihc is fundamental in locke- when oyu say you are putting your labour in
something and mixing it- how do you know what you have applied and what is the
contribution by others? juice pouring in the ocean- how much of the ocean can
you take? is there a scientific way of finding out to where the particles have flown-
how do you find out how muhc become yours. IP is a market tool. what I derive is
not purely because of the labour I put but it is also a social phenomenon.
consumers value something more than others, market may give u bonanza. for eg-
chennai express movie- it was one of the first times they did a pre launch and then
people were made to believe it was a great movie and flocked to the halls- bad
movie but market conditions were such that people wanted to see it. on the toher
hand- movies like bombay velvet, total flop. the fruit you derive from the labour
may not correspond equally. eg- remdesvir, it was a failed drug but COVID came,
people made money out of it. Gilead didnt charge anything but if he had- he would
have made tons of money. it cannot be said it was for the productive labour that

Class notes 10
 contributed in the making of it- it is a socio economic phenomenon that drove the
market to blow up.

other example- telecommunications. 2,3,4,5g- system level innovation. one single

entity will not come up with the entire system. multiple entities contributing to this
system. multiple companies are owning it. there are downstream companies- all
kinds of people who are going to use ur technologies in diff downstream
products- Q of licensing. standard- they come up with a simple ambiguous
formula, u will offer the license on fair, non discrimonyory terms. downstream
companies rely on this- i start manufacturing, i use the tech- i get sued- what is
fair and reasonable? smartphones say- the value u derive is a combination of
different techonologies. i am creating the value- why should i pay u?

main question of litigation- how should it be distributed btw downstream players-

they are inducing the demand and popularising it. the demand for patented tech is
coming from this. how do you then approtionemtn- questions of apportionemnet

06.08

Locke connects it to the natural law theory. God has given us everything in
common to everyone but once you apply labour, you are entitled to make it
your own property. your labour belongs to you and not the commons.
something external such as land belongs to the commons. the bounds are
defined by the provisos of abundance and spoilage. abundnace- as much of
good left in the commons. there is also a charity proviso- those who acquire
property must be senstive to the needs of others. locke does not say everyone
has the right to enjoy music etc. but in cases such as pandemic- it may be
justified. apart from the voluntary charity proviso, we saw that the principle of
abudnace would require that there are equal opportunities. the ability to create
the unknown.

in patent law- research exemption carved out- scientisits are not sued, it is a
defence to infringmenet- if you are conducting research, you will not be
targeted for infrignement as long as no commercial motives involved. pure

Class notes 11
 research exemption- objective to find out what it is. it furthers the objective of
patent law- to incentivise reserch and does not lead to exploitation as the
conduction of research is not coming to the market. the activity of research is
to be excluded from the market.

spoilage principle- whether refusal to license for research would be hit by the
principle? no clarity over this. take something from here- royalty litigiation
smth smth. when it started in 2008, india was not even manufacturing
anything related to a mobile phone. it all started with PLI schemes. so why
were indian distributors were getting sued? india one of the biggest
consumers. our production is not at par but that litigation mattered because
india was one of the biggest smartphone consumers in the world. questions
came up- how to approportion.

smt smth

how do you justify ip in there sphere of personality. only some can be justified
such as moral rights, right to be named as the invenotr. IP primarily is economic
rights bec u get the power to exclude others from selling producing exporting etc.
without the permission of the IP holder, u cannot do anything. in a way, it is a
negative right to exclude. apart from these economic rights, the law has evolved-
because of french, legal traditions where they recongise certain rights from ip
rights. within the IP framework, the real basis is the creator and inventor and we
ought to recongise these rights. in copyirght law, manifestation is seen in the
concept of moral rights. earlier- paternty. now- right of attribution. even if u have
assigned ur CPR to someone else- the publish still cannot deny that you are the
author,

rightof integrity- work is distorted to such an extent that is distorts your honour, it
is your protection. YP- how do you justify ghost writers then? there is no transfer
but some sort of alienation by some sort of waiver. in ghost writing business-
eocnomic rights not being transferred but the Q is who owns the authorship.

Class notes 12
 right to attribution and inegirty- moral rights and inalienable but to what extent
remains a challenge. for the sake of transparency- we will not know where the
ownership is flowing from. even in patent law- true and first inventor. inspite of the
fact that a research inst is the owner of the patent- employment agreement clearly
state that it is owneed by the RI but still the RI is not the inventor and mentioning
the inventor is required in patent law.

smth smth

is signing the same as musical composition? whihc would be closest to hegel’s

conception that property is closest to inherent inalienable? closest would be music
composition- authoral creativity. for a singer- there is no creative output which
something as robust as a musical composition. in that sense, there is a question to
what extent personality theory applies smth vs second dsiction- aithorial and
performance arts vis a vis scientific works. 2 scientists- if u put them together in a
room, give them a standard SOP- how muhc of diff creacitiy they would be
differnely exercise- personality theory justified or not. in scientific research- if 2
pepole have to approahc a problem, they will reach a similar solution. it is unliekly
2 diff results unless takes a different route and finds out smth else. but similar
result if the process followed was an SOP. to that extent, how much of this
aleination theory apply since both are creating something similar

Marx

cannot be used to justify private prop. he is known for his critique of historical
materialism and from there he has come to a conclusion that there is a class
war- B and P. So now, marxist theory can be used as a critique of IP but he did
not have a deeper understanding of the role of intanghibles in
commodification.

M- there are there 2 classes, created by his analysis of means of produciton in

the heads of bourgeous- the person who labours alienates and bec means of

Class notes 13
 production are owned by the bourgoeus- the person is able to accumulate.
marx- problem with the theory- his is a materialistic theory, critique of hegel as
he also used a dialectical method but hegel was more into human being but
marx - human being is material and hence what is material is very important.
but the problem as per YP is that marx did not understand the problem of risk.
YP- that you always do not own everything- you can always beg, borrow. P
does not take the risk the B take- there is a mismatch. people who want to
invest are few and people who want to work for investors are larger in number.
there is a problem of risk taking. 3rd problem not indeitified by marx in context
of commodity- creation is not purely manufacturing of product. he was in the
context of industrial revolution, labour exploited to create industrial procuts.
unfortunately- IP had not grown so central in the creation of those products.
with all the iphones being manufactured in china, surplous by chinese
manfudactured. why would apple have a larger chunk? because of the
intangible product- design, software, etc. may have been produced in china
but the intangible products override the cost of production. this is the situation
with tech commodities even today. the intangible part of it gave the product its
valye. his focus was more on the labour producing the commodity. this
reflection can be in marx’s example- talks about a piano manufacter and
pianist speaks volume about how the PM contributes higher and calls the
pianist a mad man. for him- its not so much important pianist is not attribute
dlabor. this problem in the marx’s articulation is one of the biggest problems.
marx’s theory has been used by subsequent theorists to primarily see the
consewuences of ip on socirty- largely called the social planning theory.

russia did not have a patent system- inventor’s certificates. what is the
problem with this? there is recongition but no question for the inventor to earn
more than what is being granted by the state. inventor no autonomy over what
he or she has created. the problem is with this is that in a state driven
situation, the state will invest in basic research, applied research for ex india
has ICMR etc- there is dehyphentating btw devaluation and smth- leads to
cycles of undercompensation and overcompensation. the state does not know
whether that grant being given is the actual value- in that context, the perosn
who wants to get a higher price thinks that there is agreater risk of this
vaccine not being accepted, i would rather give it to the govt but i were to
know that there would be greater value in the market- thats why a patent

Class notes 14
 system would be important to go in the market. this is why patents remain the
dominant way along with the state funding. in india- 60% rnd is done by the
state and others is done by the private sector. in developed countries- it is
reversed, pvt sector does the most imp rnd by value of investment. it is
reversed in india bec we have not believed in a robust patent system due to
various reasons such as socialism, colonialistion, mixed pattern. the problem is
egetting it wrong- whether it is over or under compnesation. the state itself
does not get the fruits of what it has invested as oppososed to a pvt company
that is linked to the market. even giving something as a tax break- it may seem
good but the problem is that the state does not by gving this tax break whether
we are actually doing a great thing by overcompesating these companies by
investing in research bec what the economy or value the research will create
in a mareket. that is why the laternatives to IP is a problem and the IP system is
the dominant way albeit with its own problems. important for mid sems.

07.08
take
in case of alternatives- ie state itself doing R&D, state constituting a price fund and
then you have to put your invention in the patent domain, once you get the prize
money no protection for exclusive use and thirdly- tax break. the problem here is-
we would run into constant cycles of overcompensation and undercompensation.
state would have to have perfect information about the value of this market.

push and pull factors. IP- pull factor which measns that the system attracts
individuals to use their reach, use it for commercialisation.

push- you want to push entities in the market where u think the IP system would
not work. why so? taking some examples- COVID 19. There was a drive to create a
vaccine. smth he said but pharma companies do not have incentives to research.

price funds- not very successful. one initiated by yale university global justice-
GIFT. it has never taken off- the problem is patents acts have a market signalling

Class notes 15
 function ie if i get a patent and if the product becomes successful, i am assured
no one will intervene in my ability to take the return from the market place. the
moment you surrender, you are not sure if the product would have been a success
or earn less or more. hence- most comapnies not attracted to this if there is a
condition to give away their patent.

smt smth

parallel universe btw alternatives and IP system.

problems with IP system

1. high prices for rarer things

2. when there is a situation of a monopoly- the price at which you would be able
to afford a particular IP product sans IP would be x, when there is a monopoly,
you are excluding a large number of people- there is a social deadweight loss
created by virtue of monopolistic pricing where you would arrive at a particular
class of people who would be able to pay above this pricing. IP hence is not
the best solution to market failure and free riding problem.

3. something about competition- function of IP is not just to govern static

competition but also to faciliate dynamic competition. the next layer of
consumer welfare is access to the new consumers. if u do not facilitate, there
is a serious problem of market saturation. economy would go bust. thats why-
even though it is the second best solution, they still exist.

there is a new theory among lawyers who dont understand economics about
another great alternative to IP system being discussed largely in digital markets-
open source markets etc. the problem is that since IP is 2nd best problem to free
riding, we need to focus on open solutions. eg- google, it is free because data
creates larger network value. the bottom line is not constraining in their IP but
getting your data, higher the eyes greater the ad revenue. bottom line is in ad
markets and not IP licensing. google perpetually has a problem with CPR.

Class notes 16
 everything google does is to increase their network value. they are not producing
telecom tech, there in the intermediaries market. not hardware building market.

article- the host dilemma- opens layers of how and why companies forfeit their IP.

open and closed models of innovation- method of competition. some companies

who do not have the platform markets. platform markets do not exist in telecoms.
for ericsson, your bottom line is patent protection.

fashion- argument made that they dont apply since it is fast fashion- so alternative
to IP works. YP disagrees. it is not necessary for every industry to use IPs and
design protection. for eg- seasons. by the time someone copies it, you move on to
the next season.

IP system exists to facilitate specialisation and division of labour in the market.

08.08

there are 3 problems solved by the IP system

1. incentive

2. information asymmetry- GI and trademarks

3. trade secrets- against in personam inappropriation problem.

2 forms:

1. static competition and rise in output- there is nothing new, so everyone

competes by increase output and reducing price

2. dynamic- people innovate and leads to a higher market share because

otherwise there would be a saturation of market prices.

Class notes 17
 question of what incentives to be provided in light of market failure in light of??
panel discusion- another problem discussed was that if there are platform techs-
MRNA platforms- same can be used for other kinds of diseases and cures. In india
also- we have been to come out with an MRNA platform that pfizer etc came out
with. they will use this platform in different areas. untapped potential value. once
the tech is absorbed by the companies sans IP, the tech can be used for other
things- hence why should a company lose out on its untapped potential value.
thats why companies still rely on IP rather than purely alternatives to IP. Primarily-
those who do not realise on IP system, for eg- google which is a platform tech,
those revenues are aligned w something else there are other market forces that
play in. they are doing it primarily because- markets push them for giving it for
free- if they do not do it, some other company in that kind of market is going to
exploit the same model for giving things for free and get the same network value.
it is imp for them to generate network value by giving things for free. doing this,
the value of the network creates network effects (they are created when switching
costs, consumers tend to go towards the winner. for windows- early mover
advantage, customers had already shifted to windows. with every additional user
that joins the network, the value of the network grows. airtel to aritel free- to
attract consumers from other services to airtel and hence it becomes easier to
switch over, the reason why mobile number portability came it) network effects
largely determine how businesses determine, the value the network gets which
they milk thru the ads market. google earns through other kinds of other services.
the value of Ip becomes limited for them. google gives its stuff for free and other
people’s stuff also which is copyright. authors guild vs google- they tied up w
libraries and wanted to digitise which means reprudction and it is granted to the
cpyright holder and you cannot do that without the permission. could that be
exucsed by fair use? court- yes, what is available by google is snipppets, they do
not give the entire book. comes in the fair use theory and google wants this
because there is reduction of input costs. it has all the books but it hasnt paid a
dime. do this when it comes to right to repduction.

the cost of free by jonathan barnett. the regime btw content creators and content
aggregators.

Class notes 18
 sci hub- indian lawyers said yes- indian copyright act is very socialist and welfare
in nature.

monopsy- when there is a single large buyer ; monopoly- single large seller.

Major problem of IP- economic problem btw countries

historically, IP laws have been used as an industrial policy. If you have own
companies creating IP, you strengthen; otherwise you weaken. Natural trajectory
can be seen in india. we have a robust trademark system, India boasts about it-
why? because most of indians are traders. you trade in all kinds of products. TM
most imp differentiator. that is why TM law is very robust.

CPR- there also as far as film and music is concerned, we have largely
strenghtened but in some sectors, there is a balancing of rights.

patent- we have kept the weakest. we have no tech to boast of. nothing invented
in india, only manufaturing. the intensity of R&D, the value you derive from patent
licensing is very low in india. the most amount of activity licesning is done by
foreign patent holders.
smth smth

national principle always been ther.

why to know about the intl IP landscape- primarily because you want to do away
with the problems of discrimination. secondly- describe standards of treatment of
IP- what should be protcted, how, for how long, what defences, what remedies to
be granted.

4 landscapes

Class notes 19
 1. wipo

2. smth

3. regional free trade agreements- they are not multilateral- they are bilateral or
regional in nature

4. intl investment agreements- you have provisions that in all 3 the fight is btw
the states but in this case, a prvt investor gets the locus to sue the host govt.

WIPO

europe is the fountainhad of the major leg. within pan eurpore- domestic
systems of IP trying to discrimate amongst one another. there is a problem of
discrimination. some bilateral treaties were entered into but that did not solve
pan euopean problem

1833- great austrian exposition and scientists decided not to come because
the austrian patent system is weak without effective protection for foreigners.
there is no effective remedy. this created a situation that eld to a committee
which proposed that there needs to be an intl treaty wiht non discrimiantion
principles

first treaty- paris convention. india is also a party. this is cross referenced in
WTO and part of WTO law. it is gone through 5 revisions. it deals with
industrial prop- patents, trademarks, industrial designs, geographical
decisions and principles of unfair competition. there is also something known
as utility models. UM. not there in india - you do not examine to see the
strenght of inventiness but if it is exactly the same as what is there in the
market. this is to give ncentives to minor incremental workshop improvements.
not to be in done detail. they are called petty patents. they are considerd as
intell prop because they are linked to trade and commerce. diff from CPY
which was understood to be a personality rights derivated. author is the
central element, it was treated diff and did not get into the framework of the
parent convention,

main principle- national treatment, whatever treatment u give to nationals will

be extended to foreginers. second- right to priority- 12 months timeline. grace

Class notes 20
 period granted to go and file in each jurisdiction. with this, it is determined with
first date of application. industrial design - 6 months- get this??

3rd thing- indendence of production. you cannot rely on the grant or approval
of patent in your country by linking it to another country. this is the principle of
territoriality, IP rights are territorially granted and recongised. there is no intl
patent as such. it only makes it easier to file an application. file and grant in
each indv jurisiction. no global patent. the paris convention does not say that
you have to have a patent or degisn system- why? it does not determine any
standars of treatement. does not say how many years or portection has to be
granted etc. trademark has no years of limitation as if it lands in public domain
it will be ripped off. there is nothing on crtieria of protection, subject matter,
defences. paris convention is merely silent on the standards. if u are a
signatory to this, only if u have domestic system, you shall not discrimate. but
as far as right to prorioty and territorltiy, yhou have to comply. but if no patent
system, no question of national treatment. treaty does not say u need to a
mandatory patent system. standards of conventiom are not given in the par???

PA- very narrow in nature. main goal was to prevent discrimination. if u had
anational system- no discrimiantion. berne convention follows up

09.08

PC only applied to ind prop and not cpr- primarily bec there is a historical
divide btw our understanding. cpy grew distinctly.

got clubbed with the formation of WIPO- WILPI was the predecessor of the
WIPO which administered all the treaties. WIPO used IP and was internationally
accepted for the first time. there was no clubbing together.

post PC- there was berne convention. various other treaties based on satellite,
signalling, sound recordings. all those treaties which provide any kind of
substantive rights are called IP related treaties. except for marrakesh.

madris TM, berne convention and paris conv- imp for India

Class notes 21
 apart from IP protection treaties, there are global protection systems. while T
talk about substantive rights, these systems talk about how to ease filing of IP
applications globally. inspite of these T, IP rights still considered territorial as
you have to go and file in each country. Paris conv- no standards of treaty.
berne convention has it. there is no mandaotry jurisdiction of the ICJ, you
mention the T you want to be bound by.

WIPO came up with treaties- madrid protocol, one more, lisbon agreement for
GI, hague, budapest- for microorganisms used in biotech convention. after
expiry of patent, unless it is deposited- no one will be able to work it after
expiry of patent. they facilitated filing of applications along with domestic
applications. there is some advantage he said for PCD. in cases of TM- the
way in which the formalities are assessed. there is an ease in filing application
and it can be processed globally.

classification T- they are meant for IP offices to administer IP in a globally

harmonised way. locarno, vienne- wherein TM, P classification took place.
while you file an application of TM- you have to mention which class your TM
is most relevant to. TM rights cannot be granted in all classes. over a period of
time, it might be protected across classes as a well known TM.

smth here

unfair competition protected under the paris convention- it refers to dishonest

commercial practices considered under any particular trade or industry. PC- in
the following 3 cases, countries will provide remedies.

1. passing off- if someone in the market is passing off his goods as yours, using
your unregistered TM (otherwise there is TM infringement if it is registered)

2. comparative advertising- in negative sense it is called commercial

disparagement- it is unfair to exploit someone else’s mark to your advantage in
trying to unfairly compare your product with others.

3. you yourself mislabel in quality, quantity- you misrepresent your product- in

such case there is no competitor hitting on you. smth here

one of the key things about these intl T- even when these were signed and
countries acceded to them, there was a problem of 2 types-

Class notes 22
 1. enforcement is weak for eg no mandatory jursidction of ICJ

2. as far as paris- no standards of convention therefore it cannot be binding.

Berne convention:

also has a national treatment principle.

primarily diff- bec there are standards of treatment- for ex cpy- is life plus 50,
right of production are clearly recognised as rights of cpy holders. you cannot
have fair use anything more than what the berne convention requires. you
shall only provide exceptions in limited cases where it does not interfere in the
normal exploitation because they do not want to have a long list of exceptions
to eat into rights, they want to limit the regulatory rights of the countries to
limit the capacity and make it counter productive.

major exceptions

1. principle of reciprocity wrt term of protection- it acts as an exception to

national treatment principle. india- life + 60, we are berne plus, UK- life +
70, it is berne plus. the principle of reciprocity says- if you grant life + 60
in your country, the exception means that we are not bound to grant plus
70, but life plus 60 because that is granted to you in your home country.
once you travel from low protection to high protection, you do not get high
protection just because of national protection principle. you have to
comply wiht berne convention min, the extra you are granting will depend
on the corresponding prin in the country. india has 80 but uk 70, uk is
required to give only 70.

second differnence:
automatic protection of cpy

no country that is party to berne convention cannot subject any author to any
reg formality. historically- piracy in US for 102 years. by the time UK, other
countries regged in the US, pirated things flooded the market. US did not sign
the convention until it repealed it in their own country.

Class notes 23
 it is a cornerstone principle- it is automatic the moment it comes into existence
in one jursidction. registration can be optional. reg does have certain. when
you say reg, the office will not examine the novelness and originality. but in
case of a patent, novelty has to be examined, inventive existence has to be
examined for a right to be granted. in case of CPY- originality is assumed, only
a fornality rubber stamp. india law- any inquiry if it deems fit but there is no
substnative check of originality. it only gets tested in litigation. the amount of
work to carry out originality examination would be too much. patent
applications can be contained as to what is to be examined. CPY- who / what
would examine and therefore it is left to examination. this is why CPY abhoors
reg. it only gives an evidentiary value of existence and does not involve a
substantive check wrt originality.

thirdly
principle of independence

you shall not grant or deny in your country based on the grant or approval in
another country

similar to paris

rights granted

term of protection granted

what can you add in exceptions is also contained- only in certain special cases
only when they do not conflict with normal exploitation

normal exploitation- dhc- photocopying case- springer, cambridge etc

sued DU. conclusion- course packs are allowed. but if the court said any
photocopying is allowed- it would be in conflict of the berne convention.
you cannot extinguish the way the cpy would be exploited in the market.
when you make course packs, you make only a small diminsihing the right
of the CPY- get here

Class notes 24
 post this, developing countries were decolonised and had their own voices.
strenghtening of IP was opposed. Berne convention we were always a party-
british govt singed the treaty and after independe the indian parliament as it was
filled with authors etc. communists were opposing it but this was ignored. 1970s
onward, when justice chagle was made minsiter of education- he said berne
convention is too strong for inida, it needs to be diluted as even if we are a country
of authorships, most of the scientific work is done by europeans and americans
and a large population does not understand english. they are not accessible as
translated copies to the indian public. chagla- pushed for amendments in the
berne convention- a long appendix came out- it says that as far as these kind of
literary works- we will have a mechanism of compulsory licenses. how is this
different from limitation and expcetion? chagla said what if you need an entire
book and translated- we needed a compulsory license where the country pays a
min royalty to the copyright holder and give it to the indian publishers. it was given
for reproduction and transaltiona. justice chagla contribution to berne convention.
it was a time of socialism and gelled well with indira gandhi’s ethos. who has used
the berne convention since the appendix was implemented? did we even submit
the right documents, etc.

developed countries are now going countries. now all countries have a vote and
developed countries are outnumbered. europe, US, Japan- trilateral alliance and
overcome problems of berne convention

1. treaty impletemtnation

2. standard of treamrenr for paris

3. standard of treatment given in berne but no enforcement mechanism for

domestic implemetnation in berne. berne did not say that cours ahve to
enforce ip rights inspite of other standards of treatment being there.

GATT- decisions given and will be enforced. they went and thought whether GATT
can be used to implement IP. During Uruguay negotiation, they forced the TRIPS
agreement in tit. now, any breach would be subject to int dispute stellement of a
mandatory nature. system of negative consesus- unless all countries agree to not
adopt- automatically will be adopted. all of them have to agree to not adopt the

Class notes 25
 decision, it will be binding. winning party can veto down and get the decision
implemented. major reform in IDS. It is called a recommendation and decision as
states are sov. developed countries said this is agreat place to be- form the WTO
and bring in a robust IP mechanism. TRIPS cross references berne and paris and
establishes new standards of IP- has a chapter on IP enforcement. “trade” to fit IP
into trade. specific symbolism of using the word trade specifically.

12..08

it is imp to meet the T obligations. in many countries- most of the T obligations are
referred to when deciding domestic law cases. there are questions that judges
encounter- one is the question of whether domestic law is in compliance with
international law? at best- you can give a declaratory jmt. but in certain cases- if
there is a gap in the domestic law and IL has become CIL= sometimes court can to
bridge in that gap take CIL and say that india has an obligation to comply if there is
SP and OJ. Otherwise, if it is pure T compliance and if the T has not evolved into
principles but in such cases. but in most cases, the courts will not venture into
saying if there has been a violation. the declaraotyr remedy cannot be enforced
against the parliament of india. no remedy for violation of IL. It is perogorative of
the parliament - the way it thinks fit is the way to go.

sometimes, courts refer to t texts to take inspiration and see the evolution of the
law + to keep within the limits. they want to be midnful of a jmt being a trigger of T
violation. they refer to indias obligaiton under the TRIPS agreement.

smth here

At that point in time- US did not want an itl trade organisaiton, stocks failed- do not
want world court impinding on sov- instead agreement of parties called GATT. Not
members of GATT but contracting parties to GATT. Ran till 1980s where US said-
need for WTO to formalise the dispute settlement mechanism in GATT and make it

Class notes 26
 binding on the parties. we make it mandatory by saying who is fighting the case-
mandatory jurisdiction. it was etablished through negative consensus- unless all
countries agree that this panel decision should not be accepted as valid, decision
is automatically adopted. all the countries had to adopt. from the losers forum it
became the winners forum. talks started 1986, culiminated in 1994 of urguay
round of GATT. Now this became WTO. GATT for goods, GATT for services and
TRIPS for IP- 3 major multilateral instruments. all these 3 are linked to dispute
settlement forum. now there is a system of negative consensus- any violation can
be litigated and there is mandatory jurisidction- cannot be refused. retalliation
methods- tariffs, suspending ip- measures the WTO grants if the losing party is
not coming to compliace. many countries still negotiating after the cases.

TRIPS

1. strong settlement mechanism stronger than WIPO + method of retaliation

2. it added a lot of things

a. along with national treatment principle whihc was already there in paris
and berne, they were IP treaties- it came up with MFN- since this was a
trade related treaty to IP. MFN relates to non discrimination btw 2
foreigners. introduced for the 1st time in TRIPS. whatever is done wrt FTA,
does not have reciprocity argument.

b. substantive provisions of Berne and Paris incorporated. along with

washington and rome but not imp as india not signatory. Article 2-
considered part of the TRIPS agreement. the advantage is that the berne
and paris obligations can now be litigated at WTO. T that were weak which
could not be enforcd due to lack of mandaotyr jurisdiction have been
strenghtened. this is how developed cpuntries developed further.

c. berne- lack of IP enforcement obligations. this gap was fulfilled by adding

a sep IP enforcement chapter with civil remedies with power to judiciary to
grant but now even criminal remedies are needed. it is mandatory for TM
infringement on a commerical scale. IP enforcemetn strengghened in
TRIPS

Class notes 27
 d. paris- it had no standards of treatment like term and subject matter. TRIPS-
patents to be granted in all fields of tech, products and process patterns.
why did india have this dsic rule for product patent in pharma? bec end
moleculte gets patended, hence if we need access, we need the
molecules and allow indian companies to access this. till 2005 we did not
have. TRIPS said no- process and product both. cannot discriminate btw
field of tech or place of invention. rights not there in paris- TRIPS offers its
explicity. rights, subject matter, non dscirmination, term of protection- all
were added to TRIPS.

countries asked for leeway. it was sought to be implemented from 1995. india-
we need transition regime. 10 year. hence- even while we signed trips and it
was implemented in 1995- india started implementing only since 2005. when
product pattern regime for pharma was granted.

second leeway by india- compulsoty license mechanism for patents is needed.

developed countries- we will put conditions to the grant of compulsory
license. we are not negotiating the grounds but when you grant- you need ot
pay compensation, allow patent holder to exploit monopoly. india ssaid these
free uses are limited exception- while it was given to us, it was attached by
conditions.

developed countries- ganged up- WTO. India- early 1990s- balance of

payment crisis. IMF imposed structural conditions- had to liberalise the
economy. also to accept WTO. problem- india wanted to be a part of it but
minus TRIPS. but WTO- single undertaking, all or nothing. another- india was
to be turned into an innoventive economy to increase comp etc- thiswas the
market calculation. india then was the strongest in textiles- sweatshop of the
world. we thought if we get market access in lieu, we signed. post that- india
started implementation. patents- most controversial. others did not need much
amendment, already robust.

Class notes 28
 first amendment- to be taken to WTO for violation for TRIPS- we lost the case.
Fali Nariman on the case. what was negotiated- if you take transition period,
you need to do 2 things

1. allow preeserving priority in the applications. developed countries- if

someone comes up pharma patent btw 95 and 2005- are you goint to
allow filing post 2005? no because applications are already in other
jurisdictions. why should a product patent losing the years. allow to file
application- keep as mail box application and open in 2005. remainder of
the period will be granted and not all 20 years. suppose file 1996, patent
periods are counted from dating filing app. it should die in 2016. every mail
box application will survuve for the remainder of the patent period.
grandfathering clause- s11 7a. no injunctio but reasonable compensation. it
was done for this problem. first reason- there is a sunk investment,
substantial investment aready.

a. no immediate patent protection

b. once the rights start accruing- no injunction only reaosnable

compensation

india did not immediatly implement this after TRIPS. Once the bill lapsed,
india did not have mail box facility. MCA issued instructions to patent office
to accept. Europe and USA- memo issued to DPIIT not valid- bec in 1970
when u new patens act s5 act- applications shall not be accepted. so now,
there is a memo without repealing the statute. SC would decide that
statute over memo. WTO- memo not an appropriate facility to determine
this. WTO came to the conclusion that yes you are free to determine the
agreement but it has to be consistent within ur exisitng legal system. they
askwed- if this is to be challenged in the SC, would this memo survive in
case of an inconsistency? 1998 first amendment to implement mail box
facility.

2nd amendment- 2002- other privisions in the TRIPS agreement not

related to pharma but biotech had to be implemented.

Class notes 29
 3rd- 2005 whent he product patent regime implemented. but even here-
problem- we will implement in a limited manner by denying patents to
incremental modification. for eg- viagra. some countries grant new use
patents. under s 3d- india says no. if there is any new property for any
known substances- no. india tried to limited product patents. most
controversail section. it would create a patent thicket and prevent general
entry. minimise patents behind one molecule. pharma lifecyle
management, evergreen- you are trying to enahnce the number of patents
filed so that when the patent falls in public domain u sitll have other
patents,

recnet amendment to the rules for FTA. no amendments to the act since
then.

in case of CPY- berne was atrong and we were party. nothing done to
amend till 2012- we amended not bec of TRIPS BUT bec after CWG games,
our broadcasting and digital insudtries are maturing so we brought in
provisions to protect cpy in terms of internet- copyright remedies for
indgirnyment for techn protection measures. subsequently- we signed
treaties which are called WIPO copyright and performers and sonographt
treaites- protects rights of performers, requirement to enact tech
measures, sound recoridngs- bec we have already amended the law and
we are in complaict

new act- TM 1999. india strong TM

GI was a new act, TRIPS said- in case of wines and spriits parrivualy u need gi.
in others- u can grant passing of remedies for agri etc. but india- strong
protection for all GIs bec we think we have potential to be the home of the
world’s GIs- we are trying to build a country where sustaining livehiloosds ids
imp- GI is going to empower communities in the rural and suburbs of india.
delhi- no GI.

Semi conductor protection

Class notes 30
 plant varieties also- even if ur not granting protection???, u need to bring a sui
generis leg acc to TRIPS.

trade secrets- not needed as TRIPS considered common law protection to be

enough.

14.08.2024

if you grant process patents, it is not as problematic- diff process same end
product. indian efficiency. early 80s 90s- 15 months to copy a molecule
published in the US. Later it became 4-6 months. we had manufacturing
province in copying molecules. there were also industrial instruments and
pliciies.

why is it imp? the current act is based on this problem of access to pharma. the
idea behind the patent system to keep it weaker is an idea that prevailed post
independence. we have patents act since 150 years. since 1911- new act
enacted for india - diff from british act extended to the dominion. when we
gained independence- we were in a fix- the problem- the scientisits in india
said that it was diff to copy molecules if the product patent regime continues
and impinges in our commercial aspects + broader goal of providing cheaper
medicines was defeated as big pharmas kept the prices high. in roughly 23
years, we did not come up with a patents act immediately as the pharma lobby
was strong. justice ayyangar committee report- forms the current basis of the
patent act- for interpretation and background of the current statute, we need to
go back to this report. it recommeded the abolishment of product patent
regime. took 10 years to make it into an act. the lobbying was too strong-
hesistancy. howewver- in indira gandhi’s regime that followed mixed economy.
what was distubring- US sub committee report, when comparing drug prices,
they found that the prices of drugs in india was the highest. this was a big
wake up call. 1970- act amended and product patent regime abolished. Post

Class notes 31
 TRIPS- law had to be amended. you had to have both product and process. we
asked for transition period, but needed the mailbox facility. we lost the case at
WTO bec of S5 of statute and the memo of MCA to DPIIT was ultra vires the
statute- hence if it is not legal within your own legal system, then we cannot
accept it as a valid means to accept mail box facility. it was enacted to
preserve the novelty of the application so that for the examination post 2005
period.

CPY- we were always party to berne and post independence we chose to

continue with it- the const assembly was full of authors, poets- statement of
ram dhari dinkar, as it provides moving away from russia which impinges free
speech and hence C is basis of democracy. this basis- got diluted. justice
chagla- berne appendix, compulsory lciense. section 31 of CPY. TM we are
granted. Plant variety- P or sui generis as per TRIPS. We have sui generis- for
the fact that varities cannot be judged on patenability critieria but stability,
repeated cycle of propogation, fruits, roses. seed breeding became
commerical post independence bec of tech, transgenetic crop- cotton only
approved in india. mustard still under application. there are questions related to
patenability vs plant variety protection. we enacted a diff regime itself- patent
regime cannot justify how it is to be looked in practice + wanted to be in favour
of farmers.

plant variety- post TRIPS. Even though the GI act was there, we used to protect
through certification marks such as ISI. darjeeling tea registered as a
certification mark regime. in case of GI- product has to come from the
specified territory. get smth certification marks are also reg as GI. in GI- we
protect natural, manufactured goods and agricultural goods.

CONSTITUTIONAL BASIS:
right to property- after 44th amendment, art 300A introduced. no direct case of
R2P with IP. but there is some constiutional basis- schedule 7, entry 46, list 1. IP
spoken as a form of intangibles. min of agricultre- nodal ministry for
agriculture. within the min of commerce- DPIIT all over except PVP. why not?

Class notes 32
 PVP is unique, to test the plant variety you need large tracks of land. MOA
through inst support + necessary expertise to test it. those who are evluating-
botants, biotech scientists, etc. it is not being done for a variety of practical
reasons. MoHRD used to copyright but 2016 modi said that it has to be part of
MCA- business of allocation rules. the statutory basis for these enactments
derives its basis from the schedule.

although no direct referece- entertainment network india vs UOI 2008 SC.

There is reference to the question of 300A and consequences of R2P. Even
post this case, the system has been changed. diff btw compulsory and
statutory license- a licnese is a voluntary contract btw 2 indpednent parties
where the value of entitlement and right to deny or grant is there. IP holder puts
a price. whatever is negotiated is the market basis. a compulsory license is a
forced contract on the IP holder- right to refuse the license is taken away.
secondly- the value of entitlement is decided not by the market negotiations
but by the regulator. land acquisition act- takes power away to refuse the
property. power of eminent domain. law and economy framework has been
used to what is the trigger whihc should be realised. these are liability rules-
state intervnes and power of refusal is not there and the value is not as per
market rules. in case of CL- wahtever the grounds mentioned like high price etc
has to be proved through evidence. in case of SL- it is assumed that there is a
market failure and the entire industry gets a license- radio and tv broadcasting.
till 2012- it was the CL mechanism and that litgation ended up in SC- radio
players and content creators like T series. the argument- split btw dhc and
bhc- bw said CL can be granted, DHC- cnanot be granted as there is an
ongoing litigation related to infringment. ther are arguments now that
broadcasting is diff from streaming and 31D cannot be [Link] assume
there is a market failure. SC agreed with BHC- CL within the framework
irrespective of the arguments could be granted. appellants- R2P under art300a
which should not be easily interfered with. with way of obiter as no reasoning
given by the sc- this R2P limited, no FR and can be taken away thru CL without
reaonable compensation. R2P limited post abolishment of FR.

Questions- EPG Patshala look at the module

Class notes 33
 1. wrt R2P and taking it away- patents- india not only CL but also acquisition
of the patents by the govt. what is the diff? acquisition- govt becomes
owner of the patent. In CL- owner still would be the patent holder. license
vs assignment- assignment is the transfer is the ownership vs licenase is
permission to use. analogy- sale vs lease. the question in the situation is-
would acquisition by govt still hit the R2P under 300A? acquisition is also
done through compensation.

2. right to fair return from the market / compensation- can it be argued that
there is a right under art 21 wrt deriving fair returns from the market. can
your RTP be interpreted within the framework under 21. there have been
cases- residuary property rights under art 21. if there is a right to life, is
there is also a right to earn compensation

3. cpy law- even tho it does not have a property right justification- still you
see right to free speech is a FR- if someone argues that my Right to free
speech is impended- i want to print and publish without your permission
and distribute it widely because it hink it is fundamental to my free speech-
do we then have a right to copy? to what extent can you argue? you cannot
claim within the criteria of free speech that you have the right to copy
others- cpt has to be abalcned with free speech- free speech is enabled
with CPY, engines of the same machine. CPY itself being an engine of free
speech. no indian jurisprudence. cpy- idea expression dichotomy. ideas not
protected but expressions are. merger doctrine. you want to give that copy
to others. doctrine of merger- if there is a merger btw idea and expression-
no protection- only a few ways in which a thing can be expressed as it
impedes on others ability to express. it is a derivate of this dichotomy. in
cases of merger- the expression by a prior cpy holder will also not be
protected as those are direcly needed to be copied by others. smth smth
private personal use- you can use cpy for quotations, paraody, criticism.
s52 1 i- educational use also covered. DHC-if you are preparing course
packs it is allowd under fair use doctrine. anything done in the course of
instrucion is not an infringment. this was argued by prof shamnath
basheer- argued that we should have an expansive interpretation as far as
education was concerned as publihsers argued course of instruction
means in class and anything done prior to class must be excused. idea
expression dichotomy, merger, fair use (term used in the USA)and fair

Class notes 34
 dealing excpeptions. fair dealing is based on the idea that you are allowed
to take certain portions if basic criteria is satisifed- the exceptions are
carved out for specific uses such as education, marriage ceremonies.

4. as far as TM- TM and free speech- although R2P abolished, there is still 19
1 g- can it be argued that abolishment of R2P does not matter as long as all
the IPs can be justified with the provision concerning trade and profession.
YP bful- incentive theory can be used and info assymentry for GI and TM to
say that trade is not jsut in tangible and physical commodities but
underlying intangible compenents in making the product. cannot
disconnect tangible and intangible- if there is intangible in the market- can
you still argue that freedom of trade is very vital and that froms the basis
for protecting the IP. this could be the strongest in GI and TM because
apart from being fundamentally providing incentive to the TM holder- the
main objective of TM is to reduce info assymetry and give consumers the
choice- can you still aritculate for 19 1 g? where could it be strongest? when
there is a direct trade element involved especially in case of GI and TM.

5. commercial speech- comparative ad- 19 1 a it is included as per some

courts. courts have to consistently strke a balance. do i have the right to
use ur TM for the purposes of comparing my product? to what extent
promotional speech which is producted under 19 1 a could form the basis
of the balancing test- no analysis in academia and cases. courts say we
have to strike a balance- but what is the balance? comparitive ad has a
very major role in reducing info assymetries. we have to leave it to the
market foces to compare the adv and disadv of the products. ice creams vs
frozen dessert.

19- take notes

20.08

novelty + exceptions

Class notes 35
 patent protects invention and definition includes “new” not defined but new
invention has been defined but not used anywhere in the act. only there in the
definitional clause. definition included in 2005 amendment- amalgamation of
british era laws. there are drafting errors- instead of defining new, new
invention defined.

def of pharma substances is there but it has not been used anywhere in the
act.

novelty- prior art anticipates ur invention. prior publication + prior use. rule of
global / absolute novelty. prior publication anywhere in the world means it is
hit. india did not want to grant more and more patents hence follows rule of
global novelty.

US- as far as prior use is concerned- only use considered in india. they ended
up granting patent to properties of turmeric. Objection filed by CSIR. this is
how local vs global works- idk bro take notes

defence- patent is invalid. first- patent is invalid and one of the grounds is
novelty. s64 of patents act. s107

indian law- s25- two provisons. system of adminstrative revocation of patents.

+ administrative non grant of patent.

get from here

prior art- prior to the date of your application. if provisional- priority date will
date back to then. idk bhai

Patent corp treaty- possible to file 1 single application. along w home country
desk- global desk, goes to WIPO which sends it to those countries and those
countries while examine the patent application. paris and pct route- conventional
applications

what happens in conv application?

Class notes 36
 it is filed on day X, if paris convention gives you 12 months and PCT process
takes 15-20 months- btw the time of date of 1st filing and when it comes to the
national phase

if there are consewquences of disclosure- all of them are considered null for
the purpose of examining novelty as priority date backs to 1st filing of the
patent application itself and not the PCT. pct and paris application draw
priority from the first filing of application

s33 2- from the date of filing the first application till the time it examines here-
anything happens during the disclosure- it does not bar the novelty. same
principle granted to foreign applications as well. novelty is examined is prior to
the date of first application. anything after the date of priority does not hit the
novelty.

this is imp bec of deeper contestations of what is right to priority- it can be a

subject matter of litigation that is why these rules are important.

s34- out of abundant caution. from s29-32 you shall not consider anything that
has been specifically been provided as an exception to hit the novelty in your
application. clear cut direction to the patent office- do not treat the disclosures to
hit the novelty. no concept getting clarified. to split hairs- although it mentions
conditions, is it really a bar / direction in those sections itself- if it is a condition
that the patent office may or not may not consider- the section makes it clear that
the patent office needs to consider these directions.

S2(L)- anticipation by prior disclosure or prior use.

what is anticipation?

case of 1969 based on 1911 act (1st patent enactment exclsuivley meant for
india, earlier british laws extended to the dominion of india) question- whether
a molecule which relates to reducing diabetes is novel or not? unicam
laboranorteries case.

para 15 of the case- reverse infrigement. it is a question of temporality. it is

about when. prior discloses the invention as a whole. cannot combine and
mosaic diff pieces of prior art bec then all subsewuent applications will be

Class notes 37
 considered to be an infringement. if you simply combine it- then every
applicatin would end up hitting some prior art in combination. each indv piece
of prior art must disclose the invention as a whole. the test- each indv piece of
orior art must disclose the invention as a whole. halsbury law- codification of
principles. threshold of novelty cannot be held to such an extent.

if it does not superimpose- test not passed. application has novelty. if

superimposes- your application does not have novelty.

inherent anticipation- if there is no prior use and disclosure but because it has
only commerically worked thru injection- if 3rd party can make the exact
metabolite which was being dissolved in ur stomach unknowignly.

15. That brings me to the next ground of alleged invalidity of the plaintiffs' patent
viz. want of novelty. The test of novelty as formulated by Halsbury, (3rd edn.) Vol.
29 p. 27 para 58) is in the following terms: "To anticipate a patent, a prior
publication or activity must contain the whole of the invention impugned; i.e., all
the features by which the particular claim attacked is limited. In other words, the
anticipation must be such as to describe, or be an infringement of the claim
attacked." The starting materials for the purpose of claim No. 11 were the thioureas
corresponding to the ureas invented and claim No. 11 itself states in specific terms
that the radicals R and R. 1 in the formula of the thioureas set out therein must
have the meanings given to them in claim No. 1. That would mean that the radical
R must be limited in regard to the number of Carbon atoms in the matter stated in
claim No. 1. Dr. Aumuller was asked in examination-in-chief a question as to why
the radicals R and R. 1 in the specification (Ex. A) are limited in the manner therein
stated, and his answer was "because only such products had been taken into the
patent which lower the blood-sugar", or in other words for obtaining a
hypoglycaemic effect particular radicals were selected by a process of testing on
animals. It would follow that if the Carbon atoms in R. or R. 1 were more or less
than the number specified in claim No. 1 hypoglycaemic property would not be
obtained, and that has been stated explicitly by Dr. Bander in the course of his
examination-in-chief. The evidence on record shows that it was known that
amino-sulphonamides had anti-diabetic properties. Many sulphoylureas were also
known, but they were all with the wrong radicals at either end and it was not
known that they could have anti-diabetic properties if they were activated by

Class notes 38
 certain radicals. That was the prior art and, in that state of knowledge, it was not
possible for a skilled chemist to predict that the combining of the two starting
materials mentioned in the plaintiffs' patent would produce compounds which
would have hypoglycaemic properties. The idea which is new in the plaintiffs'
patent is the discovery that a useful anti-diabetic preparation could be obtained by
constructing a molecule with a sulphonylurea in the middle and carefully planned
lumps of radicals at either end. The novelty in the plaintiffs' patent lies entirely in
the R and R. 1/ What is new in the plaintiffs' patent is that it was discovered that it
was possible to have the desired anti-diabetic properties, without producing
undesirable toxic or anti-bacterial effects of known sulphonamides like I. P. T. D.,
by modifying the structure of the sulphonylurea in a particular way. The way in
which that new idea was sought to be applied was (1) to select proper material
having certain characteristics; (2) to react them together and (3) to obtain the
product, directly or indirectly. I therefore hold that the objection to the validity of
the plaintiffs' patent on the ground of want of novelty must stand rejected.

21.08

take from here

during EIC- there was enhanced effect when tried on animals but it was not there
earlier. what those radicals were and when it has to be introduced was not there.
prior art did not disclose the subsequent application. patent held to be valid on the
ground of novelty

asian electronics vs havels dhc 2011

claim means not a prayer but the technical aspect of the boundaries of the
invention- what are you claiming as an invention. para 3

no signifcant improvements - no new adapter created, no connection

improved- bec there was a previous US patent not belonging to asian. hence,

Class notes 39
 there can be no priority for asian thru the US application. it is an old tech they
are trying to grandfather in india. J

ustice bhatt’s decision- on the US patent- get this

you cannot mosaic prior art- cannot put the pieces together. but are there are
exceptions- yes- 1l you establish connections using the source of publication.
secondly-

not much of a time gap btw source 1 and source 2- those may not be
connected pieces of art- temporal + same authors. only then- you call them
common art. but general rule- cannot mosaic and combine different pieces of
prior art.

this test is important because you dont want anything that is existing in a
single piece of prior art- it is likely that the society is performing that and using
the information but society is not entitled to combine diff pieces and practice
but if they have come up with combined pieces of prior art- that also can
become prior art- prior use. prior use is also prior art. question is whether this
combining is done prior to the date of the subsequent patent application /
before the application. if it was done subsequent- such kind of prior use
cannot be considered as it post dates. if there is no written record but the (uk
case on saleboards) someone had seen it be used on beaches and that itself
could be constituted as prior use.

some random 3rd person has combined the pieces of prior art- it has been
done prior to the date of the application. the patent office should not be
pieceing prior art for assessing novelty but society is free to combine and put
it to prior use as even prior use is prior art for assessing novelty.

inventive step bec in novelty you only assess what is being claimed is prior
disclose. that single piece of prior use / publication must anticipate the entire
invention. if there is any gap btw these pieces and invention- you have novety.
in inventine step- you go step a ahead and assess the qualititve. you are not
asking the level of idffernt but if there is any superimposing. but inventive asks
a qualitiave. many jurisdictions it is called criteria of non obviousness. person
having ordinary skill in ordinary art. we have Person skilled in art. this
definition of inventive step is located in the definitional clause. 2(1)j(a)- it is a
feature of an invention that contains technicaladvance or it containts econmic

Class notes 40
 signifnace or both. next part- that makes the invention not obvious to the
person skilled in the art. there is a way to read this definition. structure the
definition with reference to its elements

1. what do you eman by features

2. tech advance

3. economic significance

4. makes the invention

5. obious

6. skilled in the art

structurally 2 parts- one till economic signgiance and person skilled is the
other half- this is because the first half is imp for the purposes of assessing
the second part. sub component + larger part. the invention not obvious to the
person skilled in the art. second line- the invention as a whole should not be
obvious. distinction btw invention as a whole and feature of an invention that
contains tech advance or economic significance. the question is always- why
do you not look at the invention as a whole for tech advance etc? because
invention as a whole contains a lot more than features that contain certain
kinds of tech superiority. in many jurisictions- not such a long definition but
just a feature of invention not obvious to a person skilld in the art- they would
skip tech advance or economic significance. for an invention to be a non
obvious- there is no test to show tech and economic because acc to them
these criteria is a rather high criteria as to why a patent should be grantde only
to those breakthrough inventions with singifinact tec advance. many countries
like european union- when they made the patent convnetion in 1970s- they
abandoned this definition and made it only linked to the person skilled in the
art. this means- we have tightened the bolts and nuts of the inventive steps so
as to grant lesss and less patents- this is the legisltative intention of the act.
bec of htis intnetion- you introduce elements that require patent holder to
show high degree of inventivness.

feature of an invention

Class notes 41
 no jurisprudence as courts do not do a splitting analysis- go by what is given
in the evidence rather than discerning which is key to finding out what should
be assessed for tec and eco. for eg- child locks, they have different features.
there are diff aspects to an invention but for them to constitute as features-
you can show and discern for the purpoess to show tech advance.

this is imp- invention as a whole may be something more than the features of
an invention and what you are trying to claim - is not just invention as a whole
but a feature and its tech advancement. it is always the features that have
essential tech advancement.

secondly- no writ jurisprudence on what is meant by tech advance,ent. courts

often sidestep this question of how this is to be assesed. within the german
law- which they used earlier which has now been abandoned- something
strikinly dissimilar or breakthrough will be considered where it is veyr clear
that ther are certain steps taken by the inventor to show that they have gone
from a problem to a solution. those steps when taken, if they constitute steps
that are ingenious, then they would consider that there is some amount of tech
advance deciding the invention. all that has been put to rest and the tech adv
test has been abandoned- high standard where not eveyrtime u will have a
breakthrough molecule but you could have new properites, new uses,
combination inventions- what is combined looks non obviousness but there
may not be a high dgeree of tech adv by prob to sol, no paper trial for
inventions can be out of serendipity. they lowered the threshold to the
obviousness criteria. for this person, in many juris- not imp to see if there is
ahigh degree of tech adv- only- i did not think about it. that is all it takes. but
there are challenges to this as well.

tech adv- in india understanble bec it is patents on tech but there is another
crtieria

economic sign

no other jusir- has this criteria as an independent crtieria for non obviosuness
primarily bec whay you are asking- not the tech adv but may be the cost
effectiveness. for eg- process that u use for molecules, you can cut down on
safety + reduce the processes- it can become economically signigicant. use

Class notes 42
 of diff kinds of materials- that lowers the price at which the product is made
available. why was this introduced? in 2005- inv step def- when the def was
being introduced, the pharma generic industry had 2 objectives

1. reduce patent granted to freoginers

2. increase patent granted to indians

ranbaxy pharma- BK Kela- he supported this idea that the inv step has to be
divided into 2 things. make it diff by introudicng tech adv and make it easier
for indians to file patens based on econmic. his argument- indians good with
cutting proccesses and making them better but these better processes were
not tech sophisticaed but economically better in terms of reduing the cost.

in many jurisications where obv critiera- if they had to at all look at the
commercial aspects- they are known as secondary considerations for
evaluation. tech considerations are always primary consdierations. commercial
success of a product- when it is challeneged, is already in the market and is
able to show the commercial success of the product when compared to
competing products. there no tech superiority. these are secondary
consdierations which is looked at by courts but not as standalone- economic
success of the product which has the patent but we are asking for this
success at the time of the application. there need not be commerical success
for the product then. how do you show this economic sing which is not
commercial success? there is a connundrum to the meaning of it. the
decisions which are there do not interpret ecnon sign, vaguely worded-
madras hc decision gandhimati applicances vs VL Varadraju- wet grinders.
traditional is jail chakki but this was an electronic motor. court said- look at the
sales, if someone thought about it why didnt they make it + there is a higher
degree of utility attached to this. there is nothing new except for being floor
based it is table top yet it was upheld. most imp decision- sc bishwanath
radesham vs metal 1970

we dont have a lot of examples bec no other jurisdiction grants based on this

22.08

test of novely requires that if peices have been put together- it is sufficient-
each indv piece is not anticipating, what u ask for novelty- each indv piece of

Class notes 43
 prior art. is putting enough? there must be something more to the invention-
bec the society wants to grant limited monopoly to something not skilled inart.
this has been asnwered through the inventive step

Bishwanath radhesham vs hindustan metal

lake machines- used in carpentary where it allows whatever material you

want to. it is fundamental in carpentary industry. even in steel industry-
imp to make vessels, polishing purposes. problem- they are very generic
used for different items and industries and each industry wants a specific
customised one.

it was a combination invention to add a bracket to the utensils for polishing

are held firmly. by the time the application was filed- prior art revealed
past usage. it was within the probable capacity of the craftsmen to do
exactly what was sought within the patent application the invention lacks
inventive step

In our opinion, the findings of the learned trial Judge to the effect that the patent is
not a manner of new manufacture or improvement, nor does it involve any
inventive step having regard to what was known or used prior to the date of
patent, should not have been lightly disturbed by the Appellate Bench. These
were, as already observed, largely findings of fact, based on appreciation of the
evidence of witnesses and the trial Court had the initial advantage of observing
their demeanour in the witness-box. Moreover, the approach adopted by the trial
Court was quite in conformity with the basic principles on the subject, noticed in
an earlier part of this judgment. The patented machine is merely an application of
an old invention, known for decades before 1951, for the traditional purpose of
scraping and turning utensils, with a slight change in the mode of application,
which is no more than a 'workshop improvement', a normal development of an
existing manner of manufacture not involving something novel which would be
outside the probable capacity of a craftsman. The alleged discovery does not lie
outside the Track of what was known before. It would have been obvious to any
skilled worker in the field, in the state of knowledge existing at the date of patent,
of what was publicly known or practised before about this process, that the claim
in question viz., mere addition of a lever and bracket did not make the invention
the subject of the claim concerned. There has been no substantial exercise of the
inventive power or innovative faculty. There is no evidence that the patented

Class notes 44
 machine is the result of any research, independent thought, ingenuity and skill.
Indeed, Sotam Singh frankly admitted that he did not know whether Purshottam
had made any research or any experiments to produce this combination. Nor does
this combination of old integers involve any novelty. Thus judged objectively, by
the tests suggested by authorities, the patent in question lacked novelty and
invention.

uses novelty and invention as indian law did not have definition of inventine
step- the judge thru judicial evolution and cases decided abroad mostly UK-
judicially, we will also add apart from novelty that the invention is non obvious.
however- the jmt does not explain what non obv is not- no test to determine. at
the end of the day- it should not be obv. some indifications- probable cpaacity
of the craftsmen taking into account to innovative faculty. through evidence- it
is clear that in other industries were also using brackets for holding, in some
other way- everybody knew that there was a small fix to be fpund out. acc to
the judge- the patent applicant has made is the probable capacity considering
it was known that you were to have a solution to hold the vessel. not known if
inventor did some reseearch. we know- if there was some research, there
would be conduct- scientists maintain paper trail, documentation diaries.

we do not know if the case has any baring- if it really was a proposition of
obv- 2 1 j- you would have imputed taht meaning is in this context but it does
not define or give any indications. secondly- this jurisdpurdene has been
condified into the exisitng law- s3- combination of integers are not patented
anyway. once codified- is there any more relevance to this case? this case is
imp bec this is cited in every case after this. what is obv is not clearly stated in
this case.

problem with combinations:

in novelty- no combination of prior art possible- each has to be read indv to

see whether it is claiming the subsequent patent invention. here- in invnetive-
combine and read together- why so- that is the base you start with and then
you ask the question when you read the pieces together- the subsequent
application contains inventiveness.

smth here

Class notes 45
 go back to the old test and see whether there was real tech contribution by the
parent holder. TSA cannot be the sole test. Kasr vs teleflex

indian law diff- subject matter exclusion under sec 3- combination of integers
cannot be granted a patent.

ROCHE vs CIPLA 2015 - Justice mukta gupta

hydrochloride molecule- cancer

US patent filed and subsequently indian patent on this molecule. when

marketed- it wont go in its old format, will be changed for consumption-
safety enahcned and toxicity reduced.

get from here

replacing the gorup has been done exactly by roche.

23.08

US supreme court said this was a bad practice. the notion of what is obvious and
non obv cannot be so relaxed. TSM not sole test, need to ask wehther there was
any tech contribution apart from putting the pieces toghether. the test diluted.
imp- as seen in roche vs cipla, TSM test is cited to see whether patented invention
is there.

Roche vs CIPLA- you have a situation where the defendent makes version B of the
molecule as CIPLAs belief - it has not been patended in india- they applied but it
was rejected. anything in public domain can be copied. CIPLA copied.
polymorphic B form. when the 1st patent was filed- if that patent actually
disclosed or anticipated the making of polymorphic B- that would also be covered
by the patent. it was not claimed but disclosed. it was quite possible that the
exisitng pattern could tell there was a coverage for these. CIPLA enters the market
and has to defend its entry. on the issue of inventive step- CIPLA- what they have
done is essentially replacing methyl ethyl groups. ROCHE patent application told

Class notes 46
 that if there is a displacement, there is a possibility of doing exactly what roche
has invented. CIPLA relies on theory that smt smth.

Court has to examine whether exhibit 51 of cited prior art which is a euro patent
application. prior publication could also include previous patent application
published. in that patent there was an example.

question- whether there is inventive step or not

one of the first cases to refer to inventive step affirmately

1. first question dealt with structural similarity- prior art plus current application
had a high degree of similarity- only the positions were changed. if there is a
high degree of sim- would that be a ground to conclude that there is no
inventive step? court relied on several jmts to conclude it is not a ground.
smth about para 139.

2. smth before this - this decision relies extensively on the decision of experts-
courts do not have the scientific expertise. defendent witness prof nangia
examined. all people who are chemists are not involved in drug development.
the problem- a skilled person in the art is not equivakent to an expert witness.
whenever examinng inventive step- it cannot be skilled person. court inflates
person skilled and expert. person skilled- notional figure is created by the
examiner. it is like a reasonable person standard created by the courts. this is
because of hindsight bias- unless you get the application in front of you, you
do not get the circumstances. smth here - court lists that dfnendet witness not
credible.

3. no actual evalaution of how based on the facts the inventive steps should have
been determined. court simply- CIPLA was not able to discharge its burden.
plaintiff only needs to prove infrigmenet but CIPLA counter claim, has a higher
degree of burden. if CIPLA cannot show positively lack of inventive step. this
case becomes imp- the courts have in some ways laid down tests for inventive

Class notes 47
 steps for discussion. final test- after looking into various decisions, 4-5 step
process:

pravin anand case

relatd to wind energy

question of novelty and IS- who should be skilled person? problem in india
law- the reference does not use the word ordinary. what is the implication? if
you impute anything beyond anything beyond common knowledge, every
invnetion would become obvious to this person. bec of lack of ordinary it
should not mean that there should be a high degree of knowledge which
should be imputed. The IPAB disagrees with this formulation that person
skilled in art should be ordinary. they said indina law is veyr neutral on who
these people can be. its not required that this person is a dull person, not
wanting to venture into any kind of experimentation and thats why as far as
indian law is concerned- need to be highly inventive but also not someone not
willing to venture out. THE MORE and more knowledge you attribute beyond
the ordinary, less and less the application becomes inventive. thats why the
lack of the word ordinary is one of the most controversial and diff aspects of
the IPS. this was not an oversight by the legislature. looking at parliamtnery
proceedings- clear that the parliament is conscious of the fact the word is
used in other jrisciations but it wanted to allow courts to attribute meaning to
this person. dpeending on the state of knowledge attributable- IS may be
higher or lower- conceptually one of the most diff question.

alloys bobber vs COP

problem of corresponding requirements in IPL

section 64:

(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.

plaintiff was trying to use this as an argument to state that the composite
reading of 64 and definition of inventive step would require the attribution of

Class notes 48
 ordinary knowledge to the persons skilled in the art.

to do a harmonous reading btw 2 1 j- the person skilled must be from india ,

naturally there would be a diff in the scinetific and technical knowledge and it
should be lower- court said no to this arg - as far as s64 is concerned, you
look into the level of knowledge for the pirposes of ENABLEMENT- whether
the invention which is disclosed in the patent appl was sufficiently enabling an
indian person to make the invention aft the expirty of the patent. but it does
not mean that the patent applicant must be subject to the same threshold of
lower knowledge to be attributed to the skilled person in the art. this is why
there is a distinction btw requirement of inventive step patent holder vs a vis a
defnendent is concerned- what was published in india. if you want to reovke
the patent- the invention was no sufficienrly enable for an indian person to
perform after the expirty but requires a high dgeree of threshold for patent
application. it can be an imagintaive person with specialisaed knowledge.

why is this imp? getting a patent or not on a subjective criteria is v crucial for
business. these tests give a lot of judicial control for determininf who rhe
skilled perosn in art is

inventive concept- totality of the invention when compared to the claims.

get ftom here

ceiling fastners

pratibha singh patent commentary - 2 new are referred only there

aadarsh ramanujan - for roche cipla

gopal subramnum- 7 sessions to explain the invention- novartis vs UOI

take notes for 28th

Class notes 49
 29.08

Definition of ind app in patents act- simplistic yet meaningful. capable of being
made, not actual use. at the time of patent application- if the invention is
cutting edge, it is not there in the market. “capable of invention” means if
someome had to replicate, it must be replicable in the real world. the burden of
ind application- the possibility that it can be made and not that you are using it.
some way to suggest that it is possible to made or used.

similar wordings- S48- rights of the patent holder. they may include power to
exclude others from making using offering for sake. the idea that a patent gets
infringed when it is actually made or used- violating the application. the same
requirement is een in the making of ind paplication.

patent infringement- when someone makes a product using the patented

technology. smth smt. the molecule may be toxic, no immediate commercial
utility. should you not grant a patent based on lack of industrial application?
can you say this molecule lacks ind application bec it is toxic? irl this happens.
when pharma molecule invented, it is not in the form in which it is marketed-
goes through layers of experimentation, new compounds and derivates are
invented around this base molecule. one of the challenges is to make it more
efficacious. second- it must also be safe. but if you only grant P based on
efficacy and safety- what happens to the base molecule? if in the public
domain, can be used by anyone. in pharma life cycle it becomes imp.

3 rounds of amendment- 1998, 2002, 2005. 2nd amednment- “Capable of IA”

introduced. moving away from the previous jurisprudence where the courts
have required utility or usefulness of invention. this is bec- a criteria of utility is
higher when compared to “capable of being made” and “used in relation”.

unicham lab- initial referred to for novelty. this case invovled anti diabetic drug
and the question was of novelty, diff of prior art. specific radicals included
which had advantages in lowering the blood sugar. one of the challenges
raised in the same dispute- lack of utility. there- words like industrial
application not used. the challenge said- not all compounds disclosed in
reference contained evidence on lack of toxicity. the court in that said- it is not
that in relation to a patentable item, should disclose similar effects- if that was

Class notes 50
 the case- the patent office must be sitting in jmt and asking for clinical trial. in
patent- disclosure was wider. not everything in relation to toxicity has been
disclosed. the court said no- look at canadian, ireland decisions. one of the
probelm- canadian courts had in the same corresponding matter recognised
the concept of utility and toxicity being one of the grounds on which you can
assail the pattern. claiming for this jurisrprudence to be applied in india. held-
no, india derives from UK pisition and the position which was grounded in
utility in terms of toxicology reports ot be shown - this was not the position
anymore. it was advisable to not apply a very strict standard on utulity. one of
the issues of ind application- the description provided by the inventor, the
description would alwsays point to certain kinds of usefulness of how it works
in the market. once you do that, there is a paradox- this kind of disclosure can
lead to questions of whether you are fulfiling the promise.

bt tech crop example

capable of ind application = usefuless- what the courts believed for a long
time. if there is a failure of technology subsequently, the patent is liable to be
invoked. this jurisprudence in relation to canada was overturned by the
canadian SC in 2019. post that- canadian law now says capable of ind appl
does not mean that there must be an analysis of what is promised in the
application and the failure leads to lack of IA. this is interesting- pharma,
biotech- where patents are granted in relations to organisms- there is a
chance the tech will fail in the real workd. it would not be appropriate to
heighten the standard

promise doctrne- what is promiesd in the specification, it is revoked whne the

promise is not met in the applicaiton. our law is saying capable of being made
or used- not in relation to the actual function of the tech. if the actual function
fails over a period of time- the actual tech allows other players in the markets
to copy it and build it. simple formula- ind app means simply cabale of being
made. no need to prove anything being made.

smth after this

Section 10:

it is called a specification as it is technology. anything technical is a specification.

Class notes 51
 title asbtirc tmsht msth

first point- fully and particularly describe the invention. this is also called as the
sufficiency requirement. how sufficient? enabling that person skilled in the art, end
of patent term can manufacture.

IPAB case relating to insufficiency- allepy vs controller of patents - para 53 /

57- get notes for this. lenght of disclosure not but what you disclose. capable
of being made or used. in this case- the problem is that when you are actually
making it, when you use the specifications, you are not getting the desried
result.

enablement- one of the most imp aspects of patent system

another imp requirement- s10 4- best disclosure

as on the date of filing the patent application- should the inventor disclose all
possible ways of making that invention? if he or she considers one of it to be
the best, shoiuld that be considered?

court affirmative. firsrtly- impossible to know all ways. secondly- whatever the
patent offcier thinks of bieng superior need not be thought about the inventor
at the time of the ivnention.

last class missed

30th aug

30-08-2024
Not a ground for evaluating application because only three, but it is mandatory
requirement acc to normative objectives of patent law – exclusivity in exchange of
knowledge 1. Sufficiency 2. Best disclosure – every patent application should
sufficiently enable to reproduce – there should be definitive information in the
application

Class notes 52
 One of the questions is here how do you know the best mode and what point of
time? – best mode known to the inventor at the time of filing, anything known
subsequently is irrelevant
Tata Global Beverages Limited vs Hindustan Unilever Limited
[TRA/1/2007/PT/MUM] Court said no – as long as invention is reproducible by
PSITA based on what is described in the invention – the best mode disclosure is
satisfied – applicant was claiming that data on colour material has not been
disclosed – it should be so material that reproducing it is impossible and you have
to conduct a lot of experimentation to come at that – not for more than what is
necessary for reproducing

The best mode known to the applicant as on the date of application and in that, if
there are certain features, then unless it is extremely central to performing the
invention, the inventor is not liable.

Section 64 – revocation – too mentions that if not reproducible by PSITA, then

revoke the patent. Patent office assesses this by the notional person – PSITA – at
the time of filing application, invention need not be put into practice by patentee or
any other person – so that is why the notional person.
Now, if someone wants to come with a competitive product – the person wants to
challenge the validity of the patent on grounds of novelty, IS, IA – then the person
can take disclosure as a ground. Function of disclosure requirement is not only
quid pro quo but also serves as a public notice – claims define the boundaries of
your invention – if these are not definitive, then there could be a ruling on ground
of insufficiency.
Sometimes, claims in themselves are interdependent – courts are allowed to refer
to description of application – when interpreting the claim with reference to
boundaries of invention (because third party competitors rely on the boundaries to
invent around the patent) – layers of possibilities how claims are interpreted (first
by inventor, then by patent office, then by competitors and then by courts if
disputed).
During infringement proceedings, claims are interpreted. Doctrine of equivalence
– when at the time of filing, is it possible to be made by minor changes – claims ca
be interpreted at diff levels depending upon their interest – so this is taken into
account – from 90 degree can be made 92 degree if infringed – patentee wants to

Class notes 53
 broaden the claim, patent office wants to strike a balance Provisos for 10(4) –
except d, rest are followed in all juris –

how do you describe sufficiency in biotech invention? Even if sufficient, PSITA

would not be able to reproduce effectively – so deposit the material in the
repository. You always need in relation to reproducibility in biotech – germplasms
and organisms. The government has handed over the live organisms – you need
access to the original material. Budapest treaty governs deposits of
microorganisms – needs necessary infrastructure.

There must be access to the physical material after the expiry of patent term.
Obligation on inventor is that at the time of filing – disclose which repository you
have deposited material. For bio materials, Indian law makes it mandatory to
disclose source and geographical origin of material – controversial and a treaty on
disclosure has been signed in May at WIPO. Controversial because source and
geographical origin of biological material is not inherent criteria of patentability
and you are asking for something that is more than required. Prior to the
Convention on Biological diversity – these were considered res communis – in
1950s, 1960s, amount of genetic material that went from India with Indian
scientists – gave away Indian genetic resources to foreign research institutes.
Genetic resource plunder must be stopped – CBD changed it from common
heritage to sovereignty right over genetic resources in their territory. – prior
consent and fair and equitable sharing of benefits emerged – you cannot take
away the genetic resources, commercially exploit them, patent them and make
money. The active ingredient in genetic resources is to create synthetic products
and once these are done, no one accesses these resources again because
information has already been extracted.

What existing knowledge exists on genetic resources – traditional knowledge -

Once the source and geographical origin is given, it is very clear to us what we
need to do with prior informed consent and benefit sharing – biological diversity
act.

There are corresponding provisions where if you have an invention in relation to

biotech that involves any kind of relationship with India in terms of geographical
origin, then biological diversity authority under Section 6 grants permission. The
patent office flags these and keeps in abeyance until corresponding permission
from the biodiversity office – non-disclosure of same is liable to be revoked under

Class notes 54
 Section 64 – but the liability of revocation is disproportionate – you satisfy all of
the above but you are caught on wrongly mentioned source and geographical
origin. So, in the treaty, it was said revocation cannot be mandatory.
In India – still no jurisprudence on revocation on the basis of 10(4)(d) – but
chapeau of 64 says that High Court “may” revoke the patent – discretionary power
with the court Point is that even today there is controversy with respect to it – does
it lead to revocation of patent? Court will have to look into intentions – mala fide or
advertent error

(5) The claim or claims of a complete specification shall relate to a single

invention, or to a group of inventions linked so as to form a single inventive
concept, shall be clear and succinct and shall be fairly based on the matter
disclosed in the specification. – unity of an invention
When you file patent application – there can be possibility that there could be
aspect of invention that could be coming as different patent application – plurality
of inventions – happens in cases where a single tech can be structured and
modified into different areas and fields of tech – in such a situation, patent office
determines whether it has plurality of applications – so they can say segregate this
and file diff applications. Controversy with reference to when there are plurality of
inventions – should it be filed as distinct applications o divisional applications
(Section 16).

If there are plurality of invention and inherently not linked, under 10(4) – there is no
unity and you may file a diff application

Section 8 Requirement is with reference to corresponding foreign applications to

have requisite knowledge
Section 8 has two components – along with rule 12 of Patent Rules Does not
define – same or substantially same – in Roche vs Cipla – patent was rejected in
India but were granted in US another countries – trickiest aspect

One problem is that burden is cast on patent applicant, while in seeing novelty, IS,
IA, disclosure – is on examiner and then shift on patentee.
In India, you have to supply this information in copies – online – pages missing in
between Maj. (Retd.) Sukesh Behl. vs Koninklijke Phillips ... on 7 November 2014 –
even if there is a minor inadvertent error in filing these, the patent was liable to be
revoked under 64 – does not make a difference between intentional, willful

Class notes 55
 suppression – In Philips, the DB for the first time changed the course of juris – not
mandatory to revoke but discretionary and secondly is there materiality of
information with regard to grant of patent and willful suppression. In a subsequent
case, in Erricson vs. Intext – the court said that if you do not agree with Philips,
then problem will be that an injunction cannot be granted – a light mention of
section 8 would lead to revocation of the patent. March 2024 rules changed –
databases available so do not ask so much information from inventor.

02.09

philips vs sukesh bahal- DHC- for S8, not all non compliance would lead to
revocation of patent under s64. under s64- power of the court discretionary in
nature “may”. secondly- it does not mean that in all cases will the court say
that because of the word may we are forgiving you. S8 compliance although
mandatory, with DHC jurisprudence became discretionary. cannot be said
about all the sections in the act.

when there is non compliance in the act- does not apply all across. only in
certain cases and the leeway given to the court is birtue of critical the grant it.
in many cases in DHC- regardless of wilfulness, patent would be revoked. this
cannot be said of other sections. on grounds of novelty etc, court may not be
able to exercise such discretion. WIPO treaty mandates that you cannot revoke
patent in all situations. only where is wilful or intention- only then you cna.
philips juridprudence cannot be used in all aspects of s64 but it would dpened
on the nature of non compliance.

revocability also on subject matter: why does s3 exist in law irrespective of the
definition of invention? primarily on grounds of public policy- 1. even otherwise
would not qualify for invention 2. why would you describe it in s3 again? you
want to repeat the same thing under abundant caution.

second- ethical grounds

third- to regulate patenting activity

4th- concerns of preempting certian core ideas, mental steps particularly in

cases of software

Class notes 56
 5th- concerned with pub;ic policy- would want to encourage public
comeptition

atomic areas where u dont want to grant

higher life forms

smth here

one of the questions- how to apply s3 to 21j- definition of invention. which one
has to be applied first? whether the criteria of invention has to be satisfied or
should you first look into whether it is a valid subject matter has to be rejected.
there may be meeting other qualifications but still may not be patentable. the
question on what should be applied first:

1. novartis - 2 1 j first and then 3

2. roche vs CIPLA- 3 first and 2 1 j- which YP said is more practicable. but the
problem here would be that in certain cases you can straight away straight
appply s3 and remove but in other cases- there you can say subject matter is
excldued. no question of prior are as this invention is not patentable as it is
contrary to natural laws. something that in essence is traditional knowledge- 3
1 p- you dont need to examine in light of prior art. when you have to examine a
question in light of prior art- it need not necessarily happen

no clear cut understanding and analysis of which should be applied

way to say- whether there is any interwining. unlike 3d when you need to ask
technical questions. in 3d- you have to examine significant enhancemnt and
efficacy. but in case of morality and public order- it does not matter. roche
does not apply to all situations in s3. but this has to be done parallely
sometimes bec the q of what is signifianct is intervwined with inventive step.
indu applicaiton and efficiacy intertwined. the inquriies can be parallel rather
than subsequent. something rejected under 3d might be qualified 21j- in that
sense DHC is irght as legal effect would be the same. but the inquiry should be
conducted parallely.

smth

section 3 b is structured in such a way to read it as grounds and conditions -

how does the patent office get to exercise discretion on questions that do not
relate to patenability. the controller has to exercise quasi judicial discretion.

Class notes 57
 problem- they are scientists and not philsophers trained in law. in such a
situation- how would you expect the law to be applied? this problem is not just
exclusive to india. if you look at similar provisions such as europe patent
convention- the argument was that the society should not promote patenability
of inventions that are contrary to public order or morality. public ordere in
french. why so? because it is a social contract between the inventor and
society. we should not inventise such inventions. mostly- this started more and
more with the application of these rules in cases of biotech inventions since
1970 onwards.

balancing test- gm rat that is suscpetiable of having cancer because in case of

healthy rats- not all will be. but GM are highly suspectible. balancing test-
examine benefits of granting patents vis a vis the harm caused to the animal in
question. what could be the logic by the patent officer? benefits vs harm done
by this invention? the morality argument is that you are introducing cancer in
rats, in otherwise healthy rats. benefits- clear to the humans for research but
the benefit to rat humanity- prior to this invention, you used to capture rats and
find out if they are susceptible to cancer and then test them. in natural env- 1
in 1000 would be cancerous. here- the harm done has been reduced to the
larger number of rats. in the process of acquiring, finding out- itself was
tortorous. now you have restricted it to a fewer number of rats-
quantitatively reduced. rat kind. this balancing test is one of the arguments
in europe.

coming to india- the problem is in the structuring of the section itself.

sometimes- the word public order that appears in the indian act is not there in
TRIPS. french origin to the meaning. ordere public is itnerpreted in the french
contex tnot just public order but also aspects of public policy. PO would singify
a law and order situation. PP would be broader and mean something more
than that. instead of interpreting broadly, we have interpreted narrowly. there
is no final jurisprudence. dhc peittions pending. there are many examples
when Patent officer has invoked 3b- depedns on the examiner and officer.
haphazard jurisprudence. although- there are guidelines relating to non aptent.
most commonly rejected- tobacco inventions (consumption allowed but not
advertising as it causes harm to human life, hence you reject it)

Class notes 58
 patent office in philip morris- smth there. the problem- when you say there is
an external law due to which you are denying the patent- if the law goes away
tomorrow- then what happens- invention is in public domain, anyone could
easily replication.l this was argued byb philip. second and imp- not argued in
case- if a valid P is not in place, who would you empower to actually control
the use of exact inventions developed by philip morris for ex? if someone is
illegally manufacturing and putting in market- the regualtions apply on patent
and non patentable e cigg and you have to rely on the enforcement done an
external authority- there is a demand in market and legal producers not
allowed to produce, it goes underground. exactly your copies and you do not
have a patent to stop these people. you have to rely on the enforcement of the
external body.

in re standard innovation corp 2011- patent office decision. sex toys denied
patent, not appelaed in the SC. it was argued that this kind of pleasure seeking
was immoral. second- the invention had a use with engaging in sexual activity
and interocpurse to stimulate sexyal organs. thirdly- this was unnatural bec of
the nature of sexual toy as s377 of the IPC was in its full measure. question of
morality has a bearing.

other examples- printing of notes, rejected by the patent office

hence, s3b very contested- PO using it a lot esp in the context of eciggs.

another example- preparation that used ash from the shamsham for certain
materials. since it relates to ash and human body- patent office rejected on
being immoral. no prejudice here

in other juriscitions- narrowly applied in certain classifications. for eg- stem

cell research. until the obama regime- stem cell research was considerd a no
go area as the research uses embryo and at that point in time- it was unethical
as you are interfering in life. this adds to anti abortion debate. it was argued
that this would lead to destruction. less than 100 cells in the embryo.

public morality as a construct is not associated with an indivudal but a group

at large and there is no other provision in the patents act except for attribution
of inventor invention dichotomy. there is a problem of the base and input
material. for eg- relaxin to ease labour. morality as a standard where consent
could be only one of the requirements and consent could be taken care

Class notes 59
 through health regulations. s3b cannot be interpreted broadly enough to
include violations of external laws

s3d- novartis vs UOI 2013 Justice aftab. here, the invention is in relation a new
form of a knonw susbtance. post novaris- several cases have relied on it. in
this context of pharma, the ramifications are that where a new form does not
have positive effects of reducing disease but other aspects such as reducing
side effects can be patented. huge policy decision.

s3b has also been used in other jurisdiction such as human cloning. also
sometimes rejecting patents on human cell lines primarily owing to the ethical
concerns that we do not want to encourage this kind of research. external law
that regulatiosn this kind of research. stem cell research- never been a
problem in india as our sense of morality diff from eiropean morality whihc is
based on the cocnept of creation. life starts for european from the
conceptionhence for them this stem cell research means killing life. how did
euopreans put a date as conception- it is arbitrary. there is a podcast- alan
watts. he argues that as per eastern philopshy- the notion of life is not that you
a put a date on life, birth and rebirth theory. you say- whatever is life has
alwasys existed and will exist psot. perhaps- this is why no problem wiht stem
cell researc.

03.09

s3b jurisprudence is imp bec the reason this section has existed since 2005
but the import that was given to these sections- mere discovery of a new form
of substance

want to preserve what is evergreen in pharma and agro.

evergreening- generic companies created this jargon and accepted by

acaedemia. jargon as we do not have solid concrete evidence as to what
happens in relaiton to the patent itself. evergreen- there is one molecule and
within this periphery there are derivatives of this compond which are
frequently patended. this is done in the agro chemical industry as the
molecule is not in the final shape in which it can go to the market. pharma

Class notes 60
 companies invent around the exisitng molecule and try and improving it. once
you start making a salt, it has advanced bio physical and chemical advantages
that might have certain clinical results. there could or could not be additional
therapeutic advantages to that drug. biophysical property change in relation to
the molecule may have certian non legal advantages.- some might have a
higher thermo stability which will not cure the person better but this is imp in
india bec lack of cold storage chains, the potnecy of the drug reduces it if you
expose it to heat.

question to ask- would the therapeutic advantages change? but there is

special advantage in giving it to children. or for example- normal drug delivery
system there is sustained delivery system in the body- imp for diabetes- but
this does not have indiciation of the therapeutic drug per se but has
advanatages in the overall effect in the insulin release in the body.

generic pharma companies- this life cycle mgt extends the life of the drug.
when there is a patent cliff- generic companies enter the market as it going to
fall in the public domain- by allowing to file multiple applications, there is
existence of monopoly in the market. there is patent on the molecule and the
incremental improvement molecules. they tell the doctors about these
improvements and the doctors shift to the new molecule drug. this happnes
bec docs think about in temrs of what is latest and best. therapeutic
indication is the same but if it helps in sustained results, it is better for a
speicfic kind of patient with those side effects. the company that has the
older patents expiring will introduce the latest one. it is a phenomone of the
market- consumers are the payers and the choosers are the doctors. the
argument of the generics is that this kind of reprtiiev thing where market
process aligns with patent monopoly and improvements- if the patent falls in
the public domain, it will not be lucrative. therefore- we need access to the
derivates and if u provide patents there is barrier to general entry. this is
how the life of the patent is extended which adds as barrier to general entry.

is this true in cases on patent drugs? yes. big companies like cipla- if they
invest sufficinetly in telling the doctors to shift from one P drug theyre
producing to non p- they would shift irrespective of the patent. in india- there
is a wrong notion. genric ocmpanies also produce patent infrigned medicines.
they dont have to be generic all the time. non

Class notes 61
 indian govt 2005- UAPA in power- everyone colluded to introduce this expl
and try to minise grant of p. then came the novartis case

Novartis case:

scientist in the US. when he came up with this molecule in 1992/3- there was
no one to take it to the market. he said it showed promise in relation to
stopping the growth of cancer cells. this is tryoskinis inhibitor. this molecule
inhibits the growth of cancer cells. non tech- think of how cancer happens:
mutation of cells. at this time india did not provide product patents for agro,
pharma bec of S5 which is now repelaed which clearly asked the patent
officer to not accept. Imatinem molecule. free base molecule is not the
molecule directly given to patients. novartis filed application on the periphery
of this molecule.

salt form of imatinem- it has certain advantages because the salt form
reduces toxicity, side effects of the particular drug but the patent was filed for
beta crytallisn form- any c form of salt has certain biophysical properties.
allows for better thermostability of drugs. better hyroscopicity ie the drug will
not abosrb moisture, etc. these properities ultimately led to increase
bioavaibility which is the rate at which drugs get diluted / ingested in your
blood stream. it is a pharmo kinetic property- how the drug is actually moving.
increase in bioavailability will depend on the actual evidence in increase in
therapeutic quality of the drug. 1998 salt patent was filed. mail box application
for TRIPS. you are going to preserve the novelty by keeping it on record but
will only be examiend after 2005. it was also controversial at the time as
novartis was one fo the reasons that convinced euro and us companies to
pass a case against india at TRIPS Disputes.

after the rejection of the application- N went to Madras HC not in appeal but
way of WP. the argument made was that 3d was arbitrary- no other jurisdiction
uses this term to reject P and gives too many legislation powers, arbitrary,
violative of art 14. Secondly- s3d if interpreted in way of patent office is
rejecting is currently- even tho 30% enhancement is not it- it is violative art 27
TRIPS. MHC has to hold that s3d is violative of the TRIPS agreement.

11A7- if a patent has been granted (which is not the case here)

Class notes 62
 MHC: the word efficiacy- not arb used and the patent officer will ve guided by
the invention. novitus should know better that it means therapeutic efficacy.
they were not required to rule upon the meaning of efficacy but the leeway
granted to the patent officer. on question s3d being violative- court siad we
are a dualistic country and we do not have the power to interpret unless there
is a constitutionality issue. s3d vis a vis IL cannot be examined by the local
court. why so? being a dualist country, you need to take the parliament’s
interpretation of an intl treaty on its face value. vishakha- if there is a gap, you
can use CIL. here there was no CIL, it was a question of treaty implementation
which has been done by the parliament. there was criticism by shamned
basheer that the court should have at least granted a declarative remedy even
if u cannot tell the P to enact. then it would have some value as to the legal
position of india. when modification happened in 2005- there was a mashelkar
committee whether 3d is violative of trips, political dynamics. Declaratory
position couldve settled this to a large extend. as far as the utility of this
remedy is concerned afar is intl law is ocnerned- no bearing. decision of SC is
a question of law for us but a question of fact in IL.

after N loses this battle- there was a pending appeal from the patent office
decision to IPAB- this was not in relation (MHC was not in appeal to the patent
office deicison, IPAB is an appellate baord) in appeal to the IPAB- the IPAB did
not agree with the analysis of nov and ivnentive step but they did concur with
the findings og the PO relating to 3d- bec the MHC had given an obiter that it
means therapirtoc effiacy- the IPAB fructified its decision by saying that
novartis is not able to show the thematic efficacy of the salt. Novartis was not
happy- the reasons in the decision were not veyr clear. in the context of
efficiacy- you have to find out the known substance. there are 3 kinds of
substanes:

1. free base

2. salt form

3. beta crystalline form - novartis said that this form is to be compared with a
knonw substance that is Imanteim. hence- nay kind of efficacy must be
compared btw imatienm and beta and skip the salt form.

first q the court rules on- context of novelty- there is novelty as the beta
crytalline form has not been denied by prior art. the prior art- the imanetem

Class notes 63
 application tlaked about the possibility that it could be made. 2 journal articles
in 1996 actually dsiclosd how to make salt form of imatenm. then it becomes
the prior art for the purposes of addressing the current issue. s3d- mere
discovery of a new form of a knonw substance- the first thing is mere
discovery, second- is there a new form? yes bec this is a polymorph as it leads
to crytlaissation bec it changes the morpohology. the crystalline was
produced. beta crytalline form of the salt went. the SC- as far as analsysi of
s3d is concerned- the known substance to see theraptuic effiecy would be
salt form of imetamt and not imatemt. two things to be consferend- whether
2003 zimmerman application saif the salt could be made but not how but the
journal arrticules showed how the salt could be made. then- imanetem salt
form becomes the knonw substance.

usage of crystalline form- does not abosrb moisture and does not bind.

problem- 30% bio availability as compared to what? no argument made by

novartis whether 30% would lead to enhacement in inhibition in more number
of cancel cells. just bec drug is more bio avialble does not mean the drug will
work therapetutically better. s3d- known substance is IM salt form. the last
part of the 3d expl is imp- “unless it differs…”-

first q- what is the efficiacy of a drug? SC does not provide any explnaation as
to how it reached the position of MHC. here also-they come with the idea that
it is therapeutic efficacy but they also say it is the intended and desired result.
but this can be diff from theraptusic efficacy is. but the SC does not clarify
anythign futher but goes on to say 30% bio avaukabiity has not been shown
by novartis that this leads to better inihibition of cancer cells- if this linkage not
produce even thru animal trials- under 3d rejection is correct then. what the
SC is saying that 30% bio ava compared to the knonw substance is still
enought to consitute therapuetic effifcacy bec u need to show how it leads
to better inhibition. funnily enough- they have said this is a knonw subsance
but they going back to the free base and comparing that without offering
reasons why theyre doing it. once u technically establish the knonw
susbtance, your inferences have to be shown vis a vis tht.

the problem with the decision- manifold

1. intevention filed by prof basheer- pls jeep the itnerpretiation of therapuetic

efficacy open as cocnept ssuch as lower toxicity should be included- even if

Class notes 64
 does not improve indication but still has imapcts on the body. the drug
becomes less toxic even if not more efficacious. SB asked for a specific
interpretaion adn court said no, we will keep it open.

2. court does nto say how you arrive at the meaning of efficacy- YP- court could
have said that there could be various kinds of efficacy- here more free flow
etc- there are certain biophysical properties with these applications. YP- if u
dont attribute specific meaning to it, the provision becomes redundant and
examine it for iventive step and say there is none.

3. why should novartis show there is theraputic efficacy?

______

04/09

Whether there is enhanced efficacy of this substance when compared to the

existence substance. No explanation why the meaning given to efficacy is
thereputic efficacy. They were not able to show the thereputic efficacy so not
granted.

Criticism:

How the meaning of efficacy changes everything. Example: stainless steel

utensils, you have to always wipe out the water from the surface. So now we apply
a black film coating on the knife which does not enhance the sharpness of the
knife. It only relates to the ability of the knife to seeve off water, so if now we make
an application for the patent. The efficacy would have meant for the sc the ability
to cut better but the invention does not relate to that. Therefore the SC saying that
the function is of every drug is thereputic efficacy which is not true for every drug
related invention. In addition to novelty, inventive step and disclosure which is
there in this case too. The court agrees that Beta crystalline form is passing
novelty threshold. So now the court has added a fourth layer to this analysis. Now
the article Prof tambi Shetty. Says that as as far as inventions relating to
bioavailability is concerned the courts take this as a inventive step analysis and

Class notes 65
 grant the patent. Acc to the French court, the process of crystallisation of any salt
leads to a lot of qualities which leads to enhanced biovability which in itself will not
cross the inventive step criteria. In india we did not do this. She did not examine
how this adding of thereputic efficacy changes the field of invention itself. Ex
there was 100% enhanced biovalibility the courts would have granted patents
everywhere else based on inventive step criteria but not in indi bc of thereputic
efficacy. She argues this is a heightened criteria of inventive step criteria which th
sir disagrees to bc acc to him this changes the entire field of the invention. All
inventions need not be relating to the function of the product and that is why the
deeper issue of Novartis consequences.

09.09

biotech patents:

diagnosing breast cancer- AUCL case. the patent applications related to EST-
sequence tests. one of the questions was whether this was an invention? USC
said- smth, they said that these genes and in the form they’re sought to be P-
pure info sought to be derived from exisitng human cell line. courts- the nature
of info- whether in your body or when you isolate the sequences, they do not
change in terms of any essential information- that remains the same- whether
inside or outside body. the products of nature bec of the nature of human
intervention of purifying and identification does not lead to any addition of
info- found naturally in the human body. in cases where it sought to be
recreated by complimenting DNA- patent can be granted. cannot be granted to
existing substances in nature.

smth here= some case

manual of patent practice- if you are combining two components and the
resulting composition is not leading to any kind of synergistic effect- not
leading to any additional effect which is not bec of the combination- perhaps
the patent should be granted. in relation to s3e- there is one case- recent

Class notes 66
 MHC- name?? - s3e has been read to strike down composition claims
regarding to biological substances- used for digestion in poultry. when animals
have these cattle fields, there is chance of indigestion- helos to break down
and relieve the process.

s3e- non patentability of components when they are vombined together-

known or unknonw. readoning- outting peices of prior art together. in many
jurisictions- allowed to a large extent till ksr vs teleflex which created
distinction- ????

smth. patent holder said that if someone uses the enzyme i have invented and
impacted- i should be able to sue. court said not a good enough reasoning to
allow composition claims- you can sue otherwise. irrespective- court said that
adding all these components togehter along with the enzyme will not lead to
synergesitc effect- no patent. second and most imp- previous jmt of the IPAB
had made in interpreting s3e- by stating that it would only apply when the
components will be known. not- adjective knonw not used in feont of the
components- hence no neccessity that the components being used were
previously known. court said there is no requirement that it should always be
known- as long as you are putting it togehter and not leadint to any syngerhtic
effect- no. suhc kind of combination claims will be struck down. additive
combination struck down.

smth about 3f here

3j- imp for what it includes and excludes. one of the major challenges- has been in
the western countries esp in european thought process- judo chirtisian- higher
life forms no patents bec of ethical problem in relation to providing patents to
someone creating GM animals and plants. however this is now of a limited value.
post 1970s and 80- the DNA tech allowed genes to be manipulated and encode it
with a host and use a vector to release it to the genome of a plant or animal-
would get characterisitic of the external gene. one of the things done in the west-
if u dont want to provide patent protection to plants but at least to the varieties
which is the lowest taxonomy in the plant kingdom. for eg- diff colours of roses. in

Class notes 67
 india- bec of TRIPS requirement- protection of plant variety act. otherwise- TRIPS
said allow on non bio process etc but u were allowed to exclude P ON PLANTS
AND ANIMALS. india wanted to replicate this exclusion in indian law as the
philosophy has been inclined to decrease the patents. only micro organisms
allowed for patenability. why? idk ask

another allowed bec there is no clear prohibition- microbiological process. imp

bec of decisions- stayed and re trial- moncento vs rose?? re trila never happened
and got settlled. DB jmt imp in the context of interpreting in the section- may
because no precendetial value as re trial by single judge required but when it
went for re trial a settlement happened. justice ravindra bhatt and one more- this
decision is very instructive on how this section could be interpreted. the invention
related to a product and process claim involving sequences that was isolated from
a bacterium- bacillius fringeris is naturally available in the soil. known to have high
level of toxicity. farmers face the problem of pest attach which is v high in cases
of cotton. moncento- used a vector encoded and inserted artifical cells that are
toxic in nautre into cotton plants- external traits toxic. intermingling happens over
millions of years. since it was not a natural process, they sought claims over this
sequence and the speicific insertion inot the cotton plant genome which
expresses toxic properties. the cotton balls has toxicity- you prevent the pest
attack. this invention does not enhance yield or quality. bec of diff soils, climate,
requirements in relation to irrigation, etc- diff varieites give diff yeilds but their
invnetion was generic and could be used in any variety. when used- it starts
giving this toxic trait. it is atrait bec it is not internal to the cotton plant but
extenally inserted thru this micor biological process leading to this DNA construct.
this was sought to be patented.

the patent office initially said that all claims directed towards plants, seeds have to
be rejected. the word plant was removed. what reamined ultimately was this micro
biological process and the claims were not directed to the plant per se or the
vairety but simply related to the DNA construct of the cotton plant genome. did not
cover the entire plant, variety or seed but only the DNA construct. the DHC- s3g
would apply and hence rejected patents which were already narrowly granted with
ref to selection, purification of those sequences and their use in relation to the
cotton plant genome. the release of the protein fusion. this invention was rejected
by the dhc by itnerpreting:

Class notes 68
 1. the court said what moncento had done was not to create a product or pocess
in itself but created sequences - creation of an event- whenever there is a
sucessful encoding of the gene into the host plant. the court has wtonly
intperepted this as being directed towards event as per yp

2. most importaly- the court has said that once this particular genes are inserted
into the cotton plant genome- all this leads to human intervention- all of what
is essentially biological process which does not have a human intervention as
soon as the genes are isnerted. hence- no human intervention and essentioal
biological processes which are anyway excluded. this is a diff conclsiions as
per YP as courts interpreted things wronhly. these are micro and not biological
processes which require human intervention. you cannot have 2 diff sepcifies
to intermingle naturally and for the external traits to be in another plant- takes
millions of years for this interpoalation but in this case- the toxic traits in the
bacteruam were indeitified and then introduced- this exefcise in the scieitnic
community is a micro biological execise- court has not taken it into account.
second and most imp- anyway why do u need a P- the utlity is primaitly as an
incentive and if there is an inceitve problem- mocnetnco should explore and
find a plant vairtety application. all of this led to a transgeneric vairetyy adnw
ehther it falls under the act is a diff question altogether. again- the court is
confused bt the 2 questions. the Q whtehr it leeads or does not lead to a
variey- is diff- whether there is an invention per se intrpduced in a variety.
every invenstion has to be introeduced in a variety. if the car not patentable,
engine also not. stupid anaology. this interpretation is a bit diff thats why the
SC also stated that we dont need to conduct a futehr trial but the court siad
no- DB by not examining trial evidence and just interpreting etc- that was a
wrong process to be gollowed- remanded back to trial. no confirmation or
rejection on how 3j has been itnereprted by the DB.

In relation to m’s invention- the P granted in relation to process claims and the
creation of artificial DNA construct - this led to diff process claims- the validity of
which is in q as noth parties have settled. DB decision in appela and these patents
are still valid but the intpretion is not precedntial as there is no re trial. this has a lot
of implications in transgeneric agriculture. only one crop allowed in india- cotton.
other application pending for GM mustard. tech in most of these cases is choosing

Class notes 69
 of external traits from external environemtn and then use of those genetic
sequences into the host wherein once it is being introduced, it starts reflecting
those traits not original to those species. implications to how s3j and wider scope
is to be implemented.

also imp bec in the future p will be filed and if 3j is to be intprepred broadly- it can
hit every biological substance- “in any part thereof”- it could mean to include
anhything- what would then become the scope? how would it be restricted? where
are we safe?
where are we not safe- court confusing what is a micro bioligical process as there
has been already a lot human intervenion and biological processes. YP says it is
exactly a micro bio process which would not have occurred without this human
intervention. india- essdentially bio process and erjected it. this bio process was
allowed bec TRIPS allows us to exclude it. idea was that things like fermention
type processes should not be allowed as they happen naturally. but for eg- when
u make curds at home- diff from radically made in the marekt as various steps
introduced in the process that has enhanced the output. solid dahi at market vs
home- the reason being fermention is natural and a biological process essentially
but it becomes a micro bio process when u intruduce steps and itnervene in an
industrial process. mohter day etc- introducte additional steps to provide
additional properoties. initally- when these exceptions were sought- they were
largely thought to b eprocesses of nature but whe we relaise tech allows to depart
from natural processes. monsanto is not asking for variety protection- for
invnetion which is a GM micro bio process and DNA cosntruct which would not
naturally exist.

Monsanto v. Nuziveedu
next point- it can be called a transgeric varieyu but that could mean that the BT
traits that have been acquired does not mean that this should allow regsitration
where reg question arises. one of the issues with PV system- it undermines the
tech component involved in the invention. copying would lead to infrignement -
thats why inventors want to claim patents as the patent act is stronger. it would not
matter the variety of the ivnention. not a convininh arg.

Class notes 70
 why it should be under the patent act:

1. patent act does not have additional exceptions

2. when u have created variety- it relation to plant variety- authority has the
authority to determine the value. patent act does not= depends on the market.
only exc eption is compulosry lcience but otw PA is v imp to get the invention
protected. they protect the external manfiestation and not the technical
process itself. expers say that this kind of overlap can be avoided by
discriminating the faculy to construe what an invention is vs a trasgenic
variety

10.09
TK is something that is known and existing in prior art. smth here using inventive
step etc

if you look thru the jmt- the court assessed prior art to see TK- based on earlier
disclosuers come to the conclusion that this invention is not patentable.

this is a controversial section.

medical methods patents-

exclusions- S3(i)

it is not for products- only for processes

argument- there is a high risk that ind docs will be sued. secondly- lack
industrial applicability as they are performed on human body- cannot show
venoderabel process or product that can be put in place.

diff jurisdictions- evolve doctrines. in euoprean patent convention got

crystallised as an exclusion. TRIPS- Art27 3 a allowed countries to exclude
certain categories hence india continued with this exclusion but it has rough

Class notes 71
 edges due to the construing of meaning to the words. in that sense- every
pharmmaceutial product could be a method of treatment

arthrogen v. controller of patents- enrichment of blood samples. two kinds of

blood transfusion. this invention is not as complicated- collecting of blood
serum, adding gold particles and incubating and then purifying the blood- this
leads to enriching protein content in the blood serum.

8. With regards to objection under section 3(i) of the Act, it is noted that the
claims of Appellant's invention, clearly articulate a method for producing a
protein-enriched blood serum using gold particles. This process is claimed to be
an innovative method that results in a novel composition-- protein-enriched blood
serum. The potential use of this serum could be for autologous or homologous
blood transfusion. However, that is an application of the product, rather than the
claimed invention itself. Therefore, the invention does not claim a "method of
treatment" but rather a "method of producing" a specific substance, which is a
significant distinction that affects its patentability. Respondent No. 2 has failed to
take note that "the protein enriched blood or blood serum is used for autologous
or homologous blood transfusion"1 is not part of the claims. Respondent No. 2's
failure to recognize this distinction has led to an erroneous application of section
3(i) of the Act. It overlooks the fact that the process itself, as claimed, is directed
towards the production of a novel composition, and not towards direct treatment
of human beings or animals. Therefore, the objection of non-patentability is
clearly a misdirection on the part of Respondent No. 2.

the court said 2 things- what things?

para 8- indian kanoon

application of product- used for blood transfusions. however that is not the
claimed invention as per the court.

smth smth- if the applicaiton is method of treatment- should not lead to

patentability.

Computer programs

india has some experience in grant and denial. major problem- US, west, in
early 80s- question of to what extent software P can be granted. it was

Class notes 72
 controversial because the software represented mental steps, they were
sequences. the comp programme was the culimination of these mental steps.
the court - position- the software represented mental steps and applied mental
step doctrine no P. but in the 1980s US jurispruden changed- if there is some
technical nature shown, with demonstrable evidence that there is a physical
element allowed- it is ought to be allowed. Diamond vs Diad case-
patentability of computer program. after this most jurisdictions aligned
themselves with this requirng technical effect, technical contribution.
European patent office started employing this practice.

when amending our laws- same Q posed to us. euro p convention- comp
prohrames as such cannot be P but the courts there have intererpreted to
this mean- if u are p SOFTWARE without showing tehcnical effect- simple
use on general purpose computer cannot be P. technical effects- battery life
increased bec of software update. similarly- software inventions- there could
be increase in effective life of battery, memory in relation to a devide. courts in
european countries and other jurisdictions started granting patents when there
is a technical effect shown. 1999-2005- india, in btw prior to 2005
amendment- propsal to remove computer porgam and porpose any software
in combination with hardware should be allowed. parliament restricted it per
se- current law

farid anani vs controller of patent- p was almlost expiring by the time the
litigation panned out and teh court ended up instructing the PO to re examine.
it was a process related to internet search. whether a process opitmising
internent search should be P? initially rejected by PO on grounds of s3k. it
went on to appeal to IPAB- patent office confrimed jurspridence. dhc 2019-
comp prg per se does not mean that in all cases wehre there is compt prog is
associated it should be rejected. they looked at euoropean jurisprudence as
the exceptions were much closer to theirs, we can derive some strenfth from
that jurisprudence. seecondly- in evolving computer prog guidelines in india-
2013 draft guidelines- insprired from EU- argument- if there are tech effects,
CP must be allowed. DHC did not broadly interpret s3k but they did say look at
EU to see what is P and what is not P. It was reassess by PO- there was no
specific technical effect that could be easily demonstrated. second time
appeal to IPAB- this time, by relying on the DHC instruction- it came to a
conclsusion that there are indictors to what is technical effect- if a method of

Class notes 73
 using this kind of selection apparatus desgined by the apparatus led to the
consumption of less badnwithd, resources- the technical effect was there
and no furhter necessity for looking into whether tech effect com program.
that itself was sufficient. the ipab also said that this invnetion easily
demonstrated this technical effect. for eg- does the speed incresaes, memory
improves by birtue of this soft invention, is there a better way of managing
data, if that leads to any kinds of improvment in the devide as a whole. based
on this decision- patent office has started reexamining. our jurisidprundce now
largely aligns with eurp tech effect jurisprudence

technical contribution question- how is it diff from tech advancement? not

answered in the jmt. in india- legal position farid anani of DHC and confirmed
by IPAB in 2020- comp prg hat produce technical effect are allowed P.
depedning on what it ultimately leads to in terms of technical, bandwidth
efficiency. juriprudence more or less settled- align ourselves with euro
jurisprudence which requries technical effect to be shown.

these P are controverisal for ecnonmic reasons. 1- half of the industry has
moved away from P to monetize as there are open source businesses that do
the coding. the industries in service, ad markets whose business models are
closer towards an idea -preserve their bottom line not thru p monetization but
alternative mediums thru ads etc- platform models. but p are imp to preserve
bottom lime of tech companies not glued to the interent- companies that
product hardware, inventions related to 2g,3g- these inventoins are essentially
driven by software optimisation. the ability to have, license and monetise the
P- is the bottom line. the whole entire debate boils down to differences in
business models. signalling function- where hardware improves. misalignment
of business models has led to this controversery. in most jurisdictions- they
are allowed.

business method patents- also controversial- they may or may not be

implemetned through software historically. for eg- amazon cart. in a physical
space- the method of business is to put it in the same cart. smthb here. it is a clear
cut exclusion- no per se. IPAB intereprted this in yahoo vs ipab as there is no
qualification for business method or algorithm- they need to be clearly excluded
as there is no separate disqualification. IPAB- this P involved a method of a

Class notes 74
 computer that could search appaartus wherein the idea was to create a kind of
library catalogue for that of books using computers- OPAC types- this library
cataloguing method essentially was trying to implement exisitng methods in the
physical world. Yahoo was dismissed in the appeal by IPAB as indian law gives
clear cut exclusion of business methods- this implementation of the physical
world cannot be there smth smth. art 52- euro patent convention- business
methods not a clear cut exclusion but inida there are and hence we cannot rely on
foreign jurisidction- our exception is absolute, with no exceptions. there are P
granted in the US- there are tax stratgies and if u implement- P will be granted but
no in india. in india- major problem- lack of clarity on how business method P
should be assessed, what kind of prior art should be examined? some of them
have been used in computers past- methodology by the PO has been differnt and
inconsistet. yahoo took the plea that similar P granted to google, so why not
yahoo. IPAB said erronoealy grant of patent granting cannot be decided here, it is
a different question to be decided later. courts have stricly interpreted the
exclusion as there is no qualifiation to the words as oppposed to cimp porgams.
secondly- cannot look at comparitive J as most J do not have similar subject
matter exclusions like this.

3d- noveratis

3ef- composition
3p- plants, animals, biological processes

3p- traditionak knowledge- eco friendly lamp??

3k- softwre parent, yahoo patents

11.09

Examination and filing, oppositions, jurisdiction exercised in relation to patent

matters

Class notes 75
 2 reasons

form 18??

J Mitra vs CAP

when J Mitra granted P and when opposition was filed by a diagnositics

company- the problem was that the order of the pre grant opposition was
allowed to be apppealed. smth here

J Mitra contended- after 2005 act passing, these should not be appealabled to
the HC. J Mitra was the p applicant

SC- since the matter pertained to the old law and remedy was thru appeals to
the HC- it should be acc to that. it died simplidtically without legal confusion-
orders appealable then could be allowed to be appealed

this a matter of academic dsicussion and value bec the q pertained to the
operation of old law vs new law. old law- pre grant oppposiion to be filed
within 4 months. in case of appeals they would lie with the HC. Prior to 2005-
the locus of who could file the pre grant opp was very limited- only those
interested. under the new act- s25(1)- any person shall be allowed to file the
opposition. “any person” locus is quite broad. this becomes controversial
because people who may be unconnected with how the patent invention
imapcts them- they may not be creditors, RD organisations, manufactures- any
person need not be any of these but include an NGO, or any person. you can
prompt it.

serial oppositions are now filed. there is a publication, request for examnation
starts the process. there is an opp filed by party 1. by the time the contrller
decides the opp of party 1, immediately on the second say, party 2 files it etc.
this is a serial filing. time of P can get extinguished. snehal gupta v UOI- DHC-
division bench. single bench j muralidhar- confers the SB. the DB upheld the
SB that in relation to s25 what is important is that as per s43 of the IPA there is
a requirement that the patent has to be granted within a period of 6 months to
examine and grant. court- while the 6 months cannot be a definite criteria for

Class notes 76
 inserting requirements within the application but once the P has been
oppposed and the contrller had made a determination to grant the P- that date
of determination is thedate of grant, post that no subsequent serial opposition
could be filed. she is the second serial opponent after J Mitra as a serial
opposition. it was filed after opp 1 was refused and patent grant was
confirmed to J Mitra. and subsequently within the next couple od days. the
question was whether this needs to be accepted by the controller- it was
refused. hence she went to DHC in appeal by way of writ stating that the PO
should have herd her ireespecitve of being 2nd. her arg- since 25 1 does not
specify a timeline for whne a pre grant opp should be filed, the law assumes
that as many can be filed till the patent is sealed. here, the patent was not
sealed but the controller had made the determination and declared the first
opp has not succeeded. as per the dhc- this observation is enough for the
finality of pre grant proceedings and cannot be filed after this as the
determination would mean that the P is almost granted. The DHC- no
opposition be addressed after this determination. scope for PGO- the
possibility is that if htey are made prior to pre determination of the first
opposition. muralidhar uses the word serial opposition- the court was trying to
remedy a problem of applications being filed one after the other. court has
created distinction btw PGO prior ot first determinationa and post grant. any
number can be filed- why do u have to wait for the decision of the first one
after the deicsion of the first one? YP says these are delay tactics esp in
pharma industries. question was how many can u allow till the expiry? why not
file it right after the publication? whatever that can be filed is prior to the date
of the first patent opposition. no clarity over when 2 oppositions sre filed-
mudrika question

some problem fixed by- recent p amendment rules- s55 of the rules- clause
has been added wherein the controller can make prima facie determination
and reject them- summary rejections are very contested. there is a debate thar
this is inconsitent with s25 “any person” cannot have a maintavbility clause on
how this is to be disposed of. this is a grey area. problem has solved by snehal
but many oppositions being filed orior to first is still a problem. the
maintainbility requiremnt of the rules would narrow down the wider locus of
any person in s25. however- there is no jmt yet or petition challenging this
patent amendmemt rule 55- narrowing down whos ore grant opposition can

Class notes 77
 actually be heard. while it is not mandatory a hearing has to be done evry time,
howver- on request of the parites, it has to be done mandatirt. if not done- writ
jurisdciction to the HC as PNJ has been violated.

orior to 2005- there was an appeal to HC. Now no appeal if there is

unsucessful. however- if the pre grant opp has ben successful, the patent
application to whom the P is rejecred- has an appealable remedy us 117A -
why? bec- operation of law, the non grant of patent is considered an
appealbale order us 115. an order not ot grant a patent by the controller is an
appealable question irrespective of a pre grant opposition. previously to the
IPAB and now HC. Courts have come to the conclusion that patent applicant
has a remedy to go to the HC but as far as the opponent is concerned- if the
patent is granted, thye have no appeal directly to the HC. ONLY possibilty-
revocation or post grant appeal within 12 months

system of PGO- meant to be a summary proceeding to aid the examination of

the P but this has taken up legal space in indian litigation owing to these
concerns about serial opoositions.

S25(2):

Grounds identical to 25 1

smth here

interesting question- what happens to people not included in (t)- HIV Network
of people vs inst of india- DHC determined the question of locus. inclusive
definition “includes” in this case, HIV network filed a post grant opp- question-
whether they were person interested? DHC held that it is an inclusive
definition- pople remotely impacted with the grant of the P. you have to show
some remote connection wrt effect of the grant of the P. P for
immunosupprensents, they were imp from the perspective of access. this
definition has to be read to allow a broader locus to include HIV positive
people. NGO allowed to successfully participate in the post grant opp.

intention of leg was not to restrict - it is to include since it “includes”- the court
has interpreted this to mean that the locus is quite broader as anybody who
cna remotely show any connection is a person interested.

Class notes 78
 another thing- unlike pre oppp where the Q is determined directly by contrller,
in post grant- the controller will put up a 3 member board from the PO- does
not include the examiner itself. examination report given to controller who is
the final decider. examiner does not grant the P, onlt delivers the repirt. the
conclusions of the examiner are not binding on the controller. DHC- the
controller to her own satisfaiction can reject or add on grounds raised OR add
own grounds- additional response opporutnities will be given. here- controller
will consitute a board- s25 3. why is this board there? the board wont
ultimately determine- the job is to make a recommendation to the controller
who will ultimately decide.

the distinction is that in post grant- it is imp to provide the mandatory hearing
irrespective of the request of the parties as per s25 1.

pre and post are policy levers primarily designed to aid the PO to run
efficinetly parallely, peer review. post grant- so that you do not have to comply
with the requirements of the revocation petition u will have to file in the HC.
going to the court might feel like an expensive process. 1 year deadline. this is
a quasi judicial process to continue or not continue.

whem post grant filed can a revocation can also be filed? what happens when
u filed a revocation petition and an infrigmenet suit is filed against you and u
have filed revocation as a counter claim to the suit for infringmenet. how do
we know if a counte claim can be filed? s64. change in wordings of the
grounds of 25 and 64

what should take precedence as high risk as 2 judicial bodies 2 diff

conclusions- yogesh mehra vs alloys - put in reference- court had to
determine the question of multiplicty of proceedings. had to determine to what
extent counter claim can be filed when revocation.

[Link]

para 24, 25- you can file a counter claim to challenge the validity of the P
in an infringment suit. when an earlier peition is filed, it takes precedence.
same cause of action- btoh cannot be allowed to proceed. if counter claim
filed to infrignmenet suit by the def, cannot file revocation petition= same
cause of action. barred by res judiciata

Class notes 79
 12.09.2024, Thursday

Prior to the abolition of ipab, there was a problem with the infringement claims and
there would be pending revocation proceedings pendings – should different
forums, be able to lead to different ruling which finally culminated into the alloyz v.
Yogesh Mehra case. and some amount of prior in time became a criteria.
IPAB did not have the power to divide the suits for infringement. 5 high courts
have an original sides, otherwise in all these cases, the cases must be filed before
the district court, so there were proceedings before the distict or the hc. In most
cases in delh hc for example, there was a instant counter-claim being made, and
the revocation proceed was pending before the ipab. counter What about infrin
suit – is filed the concerns which emerges – in a pending post grant opposition the
grant crystallises. The patent grant get crystallisation – patent right crystallises on
the date in which it is granted and the obiter in the case that it crystallisation only
after revocation is not good law.
Why had the district courts not been given to the power to decide the revocation –
they decide only the question of lis between the parties and th. Once the suit is
filed in the dst court - once the counter claim with revocation is made, the suit
would be transferred to the respective high court.

Where does the juris arise in appeals from the patent office? Main office is
Calcutta, desgins - , trademark – Mumbai, gi – Chennai, and they have a particular
administrative structure, and the appeals would lie in the respective high courts.
And there would be a vast differene between the orders which are appealbale or
not, - the mandatory hearing or not, or the controller not hearing the application,
there is no provision to appeal, the courts have exercised the jurisdiction and
taken up writs. In other cases, the matter was remanded back to the po, from the
ipab or the high court, and give appropriate reasoning for rejection.
Infring- can be filed in dist court where there is no high court with original side.
No suit for declaration or relief, or infringement section 104 – how do courts get to
exercise juris – wrt infringement and revocation and the appeals from the ip officer
[high courts where the ip office is located.] the other question is – how do courts
dist courts or commercial court get to exercise juris?

Class notes 80
 The issue here is the operation of cpc makes it clear that wherever the def is
residing there would be juris, unlike in case of copyright or trademark, where there
is option. But in patent there is no option and cpc framework in strict application
can be seen, which cannot be the pf’s residence. Otherwise, the juris is decided
as per the subject matter, and order 20 also provides that in case of multiple
parties and multiple def – this is by virtue of the application of cpc. In most patent
matters – in Delhi high court – they would end up exercising the – because the
matter is sold in one of the jurisdicition, then that cause of action could be
exercised.

One of the important things – how do you determine – rights and the infringement
are one of the most critical aspects.

Section 48 – 48. Rights of patentees.—Subject to the other provisions contained in

this Act and the conditions specified in Section 47, a patent granted under this Act
shall confer upon the patentee—

(a) where the subject-matter of the patent is a product, the exclusive right to
prevent third parties, who do not have his consent, from the act of making, using,
offering for sale, selling or importing for those purposes that product in India; (b)
where the subject-matter of the patent is a process, the exclusive right to prevent
third parties, who do not have his consent, from the act of using that process, and
from the act of using, offering for sale, selling or importing for those purposes the
product obtained directly by that process in India: the rights have been defined in
this section.

A patent under this act, confer the exclusive right to remove the third parties – the
right to manufacture or the right to sale would be governed by other regulations as
well, like in pharma the marketing is governed by the pharmacy act.

in bio tech – governed by genetic engineering control committee, and what the
patent law gives is the right to exclude others making using offering for sale,
selling or importing for those purposes that product in India.

There is no mention of export in this right. Subsequently in a case they have

determined export – cannot be made by virtue of other section of law. In most juris
export was never a subject matter, because a person is purely exporting, unless
there is some market or sale, the question does not harm the patentee the

Class notes 81
 domestic market, and if external harm is caused it is the other juris’ authorities job
to check it.
Therefore, export has historically been understood only particular instances. in
usual situation – they would require the burden to be discharged by the def – the
person who is allegedly infringing because a patentee pf can only surmise or
make an assumption wrt the use fo the process, and he does nto have access to
the process or evidence, this is distinct from product infringement where you can
examine whether the patent is infringing. In process this analysis cannot be done
and the pf can only assume and therefore there is a reversal of the burden of
proof.

Primarily – the law operates to suggest if there is an instance where there is an

identical product by the infringing process, defe can prove that he is using a
different, where the patentee has unable to reasonable efforts to determine what
process has been used. First prove that the product is identical and the reversal of
burden of proof does not apply. This reversal is important lever- in complex
invention where there has been a process patent infringement and it allows the pf
to only prove a scintilla of the process being claimed. In second part when the def
is discharging the burden – and the def may himself be having a lot fo commercial
secrets and there is a specific provision to protect these. The courts usually
constitute confidentiality clubs, the court is told that there are commercial secrets,
legalised only. What is an infringement is different from conceptual perspective by
applying various doctrine and this analysis is important to understand if there has
been.
just note that- prior to the abolition of the IPAB- it had jurisdiction wrt appeals from
the controller’s office including denial, etc., questions in relation to revocation
petition being filed etc- however- no power to determine suit for infrigement-
always at district or HC of original side- 6 courts of india.

para 24, 25- imp cases

one of the questoins that emerge- suppose there is already a patent infringmenet
suit soon after the grant of P us 11- while they shall have the same rights since
publication but suit only after grant. whether if there is a post grant objection,

Class notes 82
 does the P still crytallisae? yogesh mehra considered to be obiter in a subsequent
case that P right does not need to be crytallise- must be crytallised on the date it
is granted. it is not good law to say it will get crytallised only after revocation is no
longer pending. issue was resolved using cpc and patents act together- whatever
prior in time needs to be addressed first. another revocation cannot be filed to
invalidate again.

post 2021 tribunals act- all of this is considered academic as IPAB has been
abolished and conferred powers on HC. All pending cases in IPAB transferred to
HC.

why are district courts not capable of addressing invalidity issues? the patent act
limited the jurisdiction of the district and commerical courts- it was seen only as a
lis btw the parties. it could only hold the P was infringed or not. if they had to
address the issue of invalidity- the right in rem could be struck down- too much of
a power to be vested in the DC keeping in light of infrastructure to decide such
complex issues.

where does jurisdiction lie from the appeals from the controllers office? there are
patent offices in delhi mumbai madras and cal. as far as patents are concerned-
calcutta. trademark- bombay main but can be filed in all 4 + ahemendabad. GI-
only in chennai. patent office has a particular administrative structure. when
patents were filed evrywerhe, they were filed in IPAB. post abolition IPAB, they will
be filed in the respective HC. if there are issues wrt writ jurisdiction to be
exercised- similarly respective HC will decide. there would be a vast difference
btw orders that are appealable and those that are not.

take notes for this day

13.09

Class notes 83
 get first 10 minute

13.09.2024, Friday
One fo the important consideration to section 48 is the determination of
infringement of patent, howdver this has judicially evolved and they hold that
anything similar to the patent claim the same would end up being infringed. The
section does not define infringement. First you construe the – markmen test in the
usa. There is a true step process -the construe the claims fo the patent holder and
also then compare it with the allegedly infringing patent article.
In CIPLA LTD. V ROCHE CIPLA’S PRODUCTIO OF POLYMORPH B – DERIVED
FROM EH – ONLY Here they erroneously went on to the question of comparing the
claims of the patent product with the specifications of the infringing product. this
is wrong, because first you need to construe the claims of infringement levelled by
the pt holder. The single judge bench, compared it, but this is exactly what was
not supposed to be done.
the patent was not granted in India under section 3d -for poly b because it would
be considered the same substance. Because the same was rejected in India,
cipla’s ehcl was infringing on poly b because it was mixture of a and b. because
the polymorphic b was not patented, they started manufacturing the polymorph,
and primarily because the mixture fo a and b polymorph, and adding the
compound makes it a crystalline form – in doing so the court said that the it is
important to give purposive construction of he patent holder’s claims to determine
their boundaries and this principle of claim interpretation.
Erlotinib hydrochloride a free base molecule – out of which the new forms are
made and because this molecule has toxic property, and once you make the solt
form the toxicity decreases, they are more thermostable, hydrogrophic, and
section 3-10, whenever a new form of patent is granted you need to examine in
light of efficacy, and when subsequently when roche filed application for b, it was
rejected on grounds of section 3-d. cipla -they said that it is not patented and
therefore they can manufacture, but the court says that it is infringing, and you
need to make ehc – and this molecule was mentioned in the claim, and although
the specific claims were mentioned in respect to a mixture of polymorph b and
polymorph a., and cipla was infringing by production fo polymorh b because only
after the crytalisation of EH, could you arrive at poly b.

Class notes 84
 The division bench wrongly construed the product of the patentee against the
product of the def stating that the product involving the patent may be larger or
smaller, because there is a chance of you expanding the claim or narrowing the
claims and that would have impact of infringement. But in first principles, first you
need to look at the claims of the patent holder and only after that can you
compare. In the question re: how do we construe the claims of the pt holder to
include something similar? Doctrine of equivalence – you don’t want the df to get
out of the literal socope of the claims by making minor alteration to their product
and by claiming that It is outside the scope of the claim, because these minor
alteration can lead to substantially similar product and you can claim that you are
not infringing on the patent claims and the courts have historically used the same,
to have a broader monopoly, so that any kind of the claim is not outside the scope
of the patent claims –
what are the steps – FMC V. Natco pharma [HERE ] – one of the important
implication – what are the steps – if you look through the decision of the delhc in
this case it has prescribed the test – 1. To ask a question wehthe rht sequence in
which def process involved the same sequence of the patented process? 2.
Whethe rht essential element in the patent claims was also involved in the def
product? 3. Whether there was a substitution of a certain kind of essential element
would lead to same result?

In relation to the process or finding out what is cliam in relation to process patent
need not be necessarily the most important step because you are no arriving at he
product by the process and the process related patent only determine in ref to the
sequence and the elements of the claims are.
In May 2022, FMC Corporation filed a lawsuit against Natco Pharma in the Delhi
High Court, claiming that Natco's process for manufacturing CTPR infringed
FMC's patent. The patent, IN 298645, is set to expire on December 6, 2025. CTPR
[Chlorantraniliprole (CTPR)]– molecule – the claims in the case – the process of
making the ctpr was patented by ctpr and fmc said that in this case, the process
although not similar there were minor variations. although they were not similar,
and although there were alterations in the chain – should not discount the
infringement claim.

The court says that in def case in making ctpr, mixing of that acid by natco [
thionyl chloride ] was equivalent to the acid used by fmc. [sulfonyl chloride]. By

Class notes 85
 replacing the chlorides would make the df radically different from the patented
process.

2. by virtue of the use of tcl by def against scl [organic chloirde] the problem was
also the df process using a different kind of a reagent to get a similar acid as the
patent. Because in this case the claims were not over product but pure process
patent.

The question to be asked – the court knows t By virtue of the use of the inorganic
chloride by the def against the problem was also with reference to the def process
using a different kind of a reagent to get a similar reaction as the pf. The
chlorinating agent was different although the process would lead to a similar kind
of a ctpr. By different process there would not any kind of infringement. The court
said that essential elements used by def was different as compared to the one
used by the pf, and even if the pf acid was the essential element, it was equivalent
to the tcl use by the pf.

q emerged wrt to infringmenet- SB- unfortunately- the comparitive product.

this should not be the first step. first step should be?

conclusion of the court- for cipla to manufacture, it was essential to produce

EH, the production itself would infringe the claims. it is imp to give a purposive
construction to the patent holder to properly construe the boundaries

need to look at the claims of the patent holder- analysis of the division bench

get till here

moving on,

how do we construe claims of a patent holder to include something?

imp case not in refered in the syllabus document-

Class notes 86
 doctrine of equivalance- you do not want to the defendent to get out the scope of
the patent by making minor alterations and claiming that it is outside the scope of
the claim. sometimes- change in the steps etc can lead to substantially similar
project. you can claim that you are not infringing on the patent’s claims. other
jurisdictions this doctrine has bene used to allow the P holder to have a broader
monopoly so that smth not considered outside so that infrginement is not outside

what are the steps to the test: FMC Corporation vs NATCO

the dhc has prescribed certain tests- [Link]

P for CTPR- the method to make it was sought to be p by fmc. their contention-
the processes used by natco, although not similar- minor variations were noticed
but that should not be used to discount.

first question the court asked was - idk- the court said no

cannot be colourable usage but literally being outside of the scope. not the
argument of FMR. in this case- the court found that the use of an organic instead
of inorganic made a difference. secondly- something else

doctrine equivalence in this case is recognised and applied to prevent from

stepping out of the literal claim. looked at the sequences of the steps and the
essential elements of the process patterns.

product by process claims

this is imp bec a product directly obtained something here

it is quite possible that the elements involved in the making of the product-
requires certain elements of the process itself. s48b of p act in india- even the
product directlty obtained by the process, scope of the claims could be

Class notes 87
 extended. there could be a restrcition on the manfudacturing of the product.
some elements very very essential to the process is being used. althoight
there may not be a direct violation of the sequences but there is a high
kilehhood of the p being used. how do u construe a product by the process
claims whent here is a product involved itself

other jurisdictions- could be a doctrine as well

products- directly obtianed by the process itself. the patent does not extend to
the product itself, tough to launch the product. by virtue of making the product
itself they could be infringing on the lements of the process itself. burden on
defendenet to show the product is entirely different

when the product is almost similar to the process

first q- product or process related patent. this is imp to conclude what has
been infringed.

befoud limited vs emerson labs- imppppp neethu did it but we havent but she
did it there so YEAH- [Link] - dealt with
how to construe claims. error made that the entire patent held by vifor was
limited to only process and not product claims.

we need to see whether there is a clear product claim involved.

notes before this

18.09

purposive construction

befour vs emerson- product to treat iron deficiency.

DB makes a distinction:

1. there is no application of s48(d)- it is a product by process claim as what is

evaluated is the FCM product. inventive smth here

before this

Class notes 88
 Defences:

1. 107

2. 107 b

all that can invalidate the P becomes the defenece as per s64

in relation to patents- defences laid down in s47 would not be defences/ s47
has 4 parts: relates to a situation where even before the grant of P, your P has
been subject to conditions.

47(1)- sov functions of the govt should not be restricted by the grant of patent
47(2)- no mention of the product. using of the process itself has been exempted.
garwal corp vs konkan railways. in this case, the defendent had given contracts to
another defendent for manufacturing certain items relating to railways. ended up
infrignigng on patent by garwal whihc has been validly granted. one of the claims
was that since KR was a govt entity- either it should be a govt use us 100 or it
should be permissible uses us 47(a). this is because you are agent of the govt of
and if there in insgifnrient, it should come under the p. the court said that the
requirement is not met to allow to make or use based on compensation. s47 deals
with compensation. if every govt use could be incorporate under 47 then what
would be the purpose of 100? court said 47 purpose should be construed
narrowly. if the govt is broadening the use to include KR, you bring under s100 and
oay comepsation as 100 ibeing compensatory use. 100 has no purposive objective
for sole usage. 100 would mean any use set by the govt, you pay compensation.

47(3)-
(3) any machine, apparatus or other article in respect of which the patent is
granted or any article made by the use of the process in respect of which the
patent is granted, may be made or used, and any process in respect of which the
patent is granted may be used, by any person, for the purpose merely of
experiment or research including the imparting of instructions to pupils; and

traditionally called as a research exemption

Class notes 89
 if you are scientist, you should not constantly worrying that your research is
going to infringe a P. PA carves out a narrow exception in the rights of the
patent holder- cannot use the perosn dping research as the acitvity is non
commerical in nature. activity is not invilved in making products but
conducting research. although not doing for commercial purposes, the
research can bencontroversial based on how you define research. under
indian law- eg. Harvard Medical School- came out with a GM rat with
cancerous gene. these cancer rats were imp for downsstream cancer
research. any inst should be able to procure these rats and test their drugs.
there are 2 situations here:

1. a cancer research institute starts making or manufacturing those GM rats

without the permission of HMS and tries and tests the drugs on the rats. if a
patent claim analysis is done, the rats are identicial and there is infrognemetn
but the research exemption could be ysed to say the rats have been produced
by us to test the drugs.

2. second-use is transformative in nature and they are conducting. you are

researching on all the rats to improve the rats. you are trying to improve upon
HMS rats. you are making an improvement on top of the exisitng technology.
you are conducting research and impinging upon the P.

which is covered?

in the first situation- you are creating identical rats and experimenting with those
rats. if this is how the provision will be interpreted, all downstream research will be
able to use this exemtpion. if ALL cancer research insitutes bec of the activity of
doing cancer research would qualify for this exemption, then the entire right of the
P holder will be diminished. the research acivity here is trying and testing drugs
which is done by every research institutie but in the second situation, it is done to
improve the exisitng reserarch.

in the second situation, the perosn is not acting in direct conflict with the
exploitation of the P holder. the job of the patent system is to allow as many
patents in the market, but if this acrivity itself is tifled, you wont have better
inventions. ofc there are questions of comercialisation of this product- no. the

Class notes 90
 improved version would need a licnese bec theres a ewcondary patent relied on
the primary patent granted to HMS.

s47(4)-

(4) in the case of a patent in respect of any medicine or

drug, the medicine or drinug may be imported by the
Government for the purpose merely of its own use or
for distribution in any dispensary, hospital or other
medical institution maintained by or on behalf of the
Government or any other dispensary, hospital or other
medical institution which the Central Government may,
having regard to the public service that such
dispensary, hospital or medical institution renders,
specify in this behalf by notification in the Official
Gazette.

does not apply to all P. products. only medicine. does not apply to making, using ,
etc. only to the act of importation. for what purpose can the govt imporrt
medicines? created out of abundant caution where a medicine is too complext to
be produced etc, we may be in a public health crisis and we should be able to
import it from anywhere. “distribution”. covers govt hospitals or any hospitals as
notified by the gazette. there are 2 constraints here: 1. only applies to medicines /
drugs. 2. only applies to act of importation. 3. should be by or on behalf of the
govt. not sure whether it has been invoked- why- during covid 19, the drug
rendisvir was a failed drug for ebola virus. was not even tested for covid. the
doctors said that if a person is dying, if the hope is to put a durg and keep them
alive then we will administer this even though it was not a part of the medicial
regime but docs across india used to the extent that it was being counterfeited by
people in ghaziabad. the govt took a lot of measures to increase the production
for this drug- but it is a complex manufcatures which requries 25 diff inputs
manfucturared by various diff companies. gilleat had the patent on remdisiver
products, gave zero royalty license to 7 generic companies. but during the 2nd
wave= it took almost a month to procure and produce it. could only scale it up
later. goi thought at that point since bangladhes was not suffering from the 2nd
wave, it sought to import the drug from the company producing drugs there. but
there is no notification for this. but it is known that it came from a bangladesh

Class notes 91
 pharma company. the problem was that this was not patentded in bangaldesh.
would this act by india would qualify as importation under 4? YP- yes provided the
govt had not done the 3rd part aks someone this??

this is imp to contrast clause 4 with what are otherwise called acts of importation
based on the principle of exhaustion of rights- next class.

19.09

research with the invention or ON the prior patentented invention. if you have to
give meaning to researche exemption- only the later would be viable otherwise
every research inst will be covered and entire right of the P will be subsumed.

S91- licensing of patents

cross compulsory license- why is this? as far as primary patent holder is

concerned, if there is an improvement- it will eat into his market.

compromise formula

91 2 ii- the secondary P holder must show that my invention is making a

substantial contribution to the development of commercial activities- this
section has not been invoked / interpreted. this is just to give an example that
after giving an exemption, the law does not stop there.

???

CCL- is not for widespread use, it is to be construed narrowly. objective of the law
is not multiplication.

A CL is diff from RE bec RE diminishing is very limited but in CL you are allowing
for commerical exploutation. CL- the power of to say no?? compensation to be
paid

Class notes 92
 right to exclude s48- power to exclude a license. CL acts as remedy to a situation
where the society needs a licnese, the govt enters and UMARCHES IN “theswe are
called march in rights”. when the terms are drawn, there would be t&C including
the requirement to pay.

s107A: regulatory review exception and doctrine of first sale or exhaustion.

a)- regulatory review exception. it is also called dolar exception by some
countries. usually, in pharma, agro chemical industries where there is requirement
to resgiter your chemicals with drug authorities for eg GEAC. Your patent expires
on the 20th year and if we you go by s48 rights of patent holder, practically any
person who wants to enter the market on 1st day of 21sy year can only start
manufacturing after the molcule or the genetic product has been approved by the
appropriate authorites, CG od drugs and comsteics and act - you cnanot
manfufacture even if the patent has expired. for the purpose of submission to dara
regulatory authority- need access to limited quanitites. thye buy in bulk, do
research, and submit so that they send it for approval and by the 1st day of 21st
year they can sart manufacturing so thay they do not need to wait to conduct
acitvity for expiermntation to subvmit data for the auhtortiies. small quantiies will
be rewquired by the auhrotieies. you can infeinge on before the expirty. it is called
bolar bec the US SC- in 1908s in the case of rsoche vs bolar decided that such
kind of acitvities are infigringing and not bto be allowed. US Congress overtureend
this decision by amending he US patnt law and creating anexception to infrignemt
t. if this is not allowed, the lifepsn of patent would be extended de facto- we want
an ealry action plan instead/.

bear vs uoi- “reasonable related”. 2019 DHC, Justice Bhatt. NATCO and one more
company that were exporting bears patented production in small quantities to eu,
china,- they were soing this bec third companies that were not related who
wanted these qts for permisison to regulatory aihtprities in their jurisdictions. bear
said this act of export was not covered in 107A- selling it from the perspective of
export to the companies that do not have a relationship with these companies.
defendents tok the defence of 107. court interpreted the word “Selling” to mean
export. this was done bec the court referred to various interpretation tools-

Class notes 93
 primary and secondary- they looked into TRIPS agreement if it puts any
restrictions to this kind of exports- they said TRIPS does not does this. they looked
at the joint prlaimetary report when this provision was dsicussef. there was no
restriction. B contended that law has to be interpreted literally wherein they said
the information required in india or any country other in india- if the P has used “or
any other country” should mean export should be allowed even if the word export
has not been used. B said no- this only means that they can conduct the acitvity
here and if th regulatory auth in other countrie ask for it- the DATA nad information
can be sumitted- this is how B says “other than india” has been used. this is a very
narrow interpretation bec u submit the adta and not export the product itself. this
is bec B says if this was the intention of the P , they would have ysed the word
export. secondly- give literal meaning. court said this argument is not acceptable
where agreemetns like TRIPS spcieic intent for epxprot has been mnetioned.
through a combination of this- if the intention is clear, the meaning should include
the word export,you cannot give meaning yourself as to why words like “other in
indiawould be used”

reaosnable realted- court made certain bservations

1. it should be of limtied quantities

2. give exact info of the companies ur are exporyting it to

3. provide info with ref to whihc law under whihc they are seeking this info ,
whether those companies intend to apply foe reulatory approval for those and
evidenve for the same

court says- once it goes out and gets exported- even tho it is limited in nature= it
can be used for other puspoes than regualtory trials. we do not want that situation.
if the law dsays it needs to ber eaonable related- it is on the export in india to sjow
and provide info that how the act of the 3rd part is realted to the info under the
law. supply in limitd qts is not a great commercial qts where u need to put
restrictions. we want to interpret the [rovisoin boradilh anf a;low these exports to
be facilitated which is the intention of the P- bec if it didnt itnend it then “other
than india” would not be meniotned.

Class notes 94
 YP- there is aprobelm with these interpetatins. eport is not a right unders48 of the
act- then court would have simply said that as far as the avitvity is concerned- if
the person is enaged in the acitvbity export-s then it wuld anyway not infrgine on
th rights of the p [Link] would have abbeen a potential way to resolve the
issue- export not mentioned as the rights. prior to export whatevr u do, it will stll
be xemptioed by 107. if u want to simply export it- u do not have a right to stop
those exports. however- neither did the parties argue this nor did the court look at
it. if there is no right, there is no remedy- by implication- selling= exoprt- under
s48 also it needs to be selling = export unless the court makes a differntiation. this
is bec they are all territorial rights under this act.

20.09

doctrine of frustration / exhaustion= vvvv impp

one the goods is sold in the market, can it be resold / exchange of hands. once
the P item is sold toa consumer, can the buyer of that product can
subsequently buy / sell it?

P sells it to B- B cannot make photocopies and ell it. doctrine only relates to
exact copies.

it has been created due to the common law restraints against the alienation of
property. why do common law restraints exist on restrain from sale? so that
the full value of the good can be realised. when the tangible

thai national case

Sotefin Sa vs Indraprastha Cancer Society

25.09

Class notes 95
 Compulsory license- contract btw the parties although no voluntary consent.

PA supports a stronger system of CL- was reworded post TRIPS agreement-

conditions wrt non assignability, compensation, etc. this was the evolutionary
basis.

4 types of CL

1. in the context of s47- post research exemption, if you want to commercialise

your secondary P- there is a system. S91

2. adverserial process when any 3rd party which has the capacity to
manufacture can apply- 3rd pary CL / market based license. - S84

3. S92- CL by notification- if there is a national emergency / public non

commercial use / extreme circumstances- any P product can be notified as
open for the P process. TRIPS allows for it bec in these situations we cannot
wait fo a 3rd party to go ask for a CL, wait for 6 months- which is otherwise
the requirements. the govt initiates the process, 3rd party applies but the
requirements that the 3rd party is to comply with are waived off in the interest
of the public.

4. S92A- relates to a situation where the public interest concerns ae not arising
within india but in a country where there is no / less manufactuting capactiy
wrt a patent invention. post TRIPS- these countries did not have
manufacturing capacity to market a paticular drug- then even if the issue of
CL- no one was there to make and manufacture. TRIPS was amended— stat in
2003, frucutified in 2015- wheein they said that countries with no or lease m
capacity- if they grant a CL then?? smth smth here. under this CL, once
granted, you cannot divery the products to india or any other country except
for the exporting country which has issued the correspodning CL. Doha ounds
of the WTO- proposal to amend the TRIPS to join the global thing for access to
medicines- no / lease manufacture. art 31 of vis?? amendment to TRIPS which
includes these countries. smth here. Rwanda wanted HIV drugs. granted CL to
abott company in canada. that law has detailed requirements and took 2-2.5
years to export the drugs.

Class notes 96
 2022 trips amendment

s83- general principles third party license. lofty, non applicable- can only be used
for interpreting ambigous texts.

s84- third party principles

84 c- wholesale exception made of 3 yeas without consdering the paris

convention. not been litigated but YP says even if it comes up u can just say it was
the indian legisliatures wisdom, not remedy unless thee can be a constitutional
challenge for the wholesale 3 year exception. give at leasy 3 years period of
cooling off period to establish an industry, infrastructure. trips only mentions the
conditions and not gounds for when CL can gegranted.

84 1 - not to be read in conjunction, to be read as altenatives. “or” after every

clause.

Bayer vs NATCO-
bayer held a p on a molecule - cancer- and the drugs is sold by the name leabar in
india. bayer did not make or manufacture in india- facts are imp. bayer imported all
the vials, all the qts. only importation happening, no manfucaturing. bayer priced
the drug at 2,84,00 per patient , per month. the qts that bayer imported, it was
sufficient according to them. it supplied to 2% of the patient population. NATCO
general company in india filed a patent application ()first and only CL to be ganted,
in 2005. NATCO was able to satisuyf all equirements.

1. a- reasonable requiements mentioned in 84(7). the demand for P article has

not been met to sdequate extend. the demand is not not fulfilled- pateient
demand

2. b- reasonably affordable price: 2,84,000- NATCO said this was an abnormally

high price primarily because NATCO could make the drug at 8,800 per pateitn.
NATCO said- you are overhcarhing, price not reasonably afordbale

3. c- not in the terriotry of india- they ae importing it. hence this ground is also
met

Class notes 97
 Litigation history- controller general- granted?? bayer argued that even if they are
nto complying and the importation is only to 2%- CIPLA was alrerady in the maekt
with the same drug. so, altihough the sales are infrginign sales bec there was a
court order allowing CIPLA to sale- Bayer said consider CIPLA’s sales to see if it
was satisfied. controller said no- will not conside CIPLA’s sales bec tey are not
bayer sles but infrigning sales. secodnly- reasonably affordable price- the
controller under s90 of the act has to look into how much has gone into the cost of
innoventing this drug. he called for the balance sheets. bayer said- cannot give
cost and gave an affidavit that a company which is manufacuting several
molduecules, cost of manufacuritng one single moluecule cannot be apportioned.
secondly- this one might be successful, others are ntot- how do we include ocst
of failure? overhead costs? no pharma company has ever disclosed the actual
cost of making a molecule. only estimates by activisits in NGO. controller drew an
adverse inference and held that this is picing cannot be related to 2,84,00- hence
we are gping to go by the fact that since this pricing has not be told us but is very
hight so adverse inference. 3d- territory of india- the idea is that in all cases the
patent must be manufacured in india- physically- and in no case can there be
importation. even if there are constraints to manufacture- it does not matter. law
does not matte as per controller. goes to appeal to IPAB. it agreed with most of the
contentions of the controller except for 2 issues: IPAB decision better due to expl.

1. on ground of working- IPAB disagreed but upheld the decision to grant P on

lack of money. IPAB- reasoning of controller is fraud bec working does not
always mean local manufacutirng, it can also be satisfied through improtaiton
provided the ptendtee has reasobly grounds to show why the P cannot be
locall manufacutred- truncated verson of working. smth there post TRIPS- art
27- you cannot discimate availability and enjoyability of the patents on the
grounds that it has been locally produced. 27.1 trips was sitting on the head of
hte judge and she wanted to ensure india was not taken to WTO as there was
a high chance of losing as it may amount to discrimination on grounds of
imported which TRIPS prevents explicity. based on this justice prabhasrehean
said- it could be done thru impotation provided there are good reasons. good
reasons- lack of skilled labours. IPAB said- they are not showing us good
reasons

Class notes 98
 2. pricing-

26th class- did not happen

27.09

patient population- bayer argued it should only be those who need it, not the
entire cancer patient population but those who are at the stage. but court-
arriving at a population size is not a mathematical exercise. there is no
arbitrary exercise of power by the controller.

the drug at the last stages extends the life of the patient by a few months, life
extending drug primarily. it does not relate to cure / mitigation / during
chemotherapy. used towards the end. the other side argued- it does not matter
what stage because patients dealing with this cancer will need it at some
point. court siad mathematical exercise not acceptable, bayers contention
rejected.

3. pricing- when CL was notified, the controller said that 5% of royalties were to
be paid to bayer as one of the conditions required for grant of CL. here,
controller paid 5% in interest of equity, IPAB enhanced it to 6%. how do we
arrive at the rate of compensation? Reliance placed on UNDP reports and what
comparitive juris have done historically is 4-4.5%. IPAB says in interest of
equity, justice= grant 6%. BHC upholds this as well. no point of contention
over the royalty. however- % wrt what? sales made. NATCO is making the
sales at 8,800 pm as compared t0 2,40,000- which is radically different from
the market value.

4. whether NATCO had complied with the requirements prior to CL grant? s84-
before applying for CL, shall have bonafide way negotiated. in this case-
NATCO had asked bayer for a voluntary license, said no. also said- we need
additional info wrt what is your manufacturing capability, wru going to
manufacture, etc related to manufacturing. NATCO did not reply to it.

Class notes 99
 reasonable period- 6 months. you should have made reasonable efforts within
this to get a VL.

BHC one of the contentions- whether this request was bonafide. BHC- moment
bayer conveyed intnetion not ot licnese, and no reply to the qs raised was not
necessary. what is required is a min attempt to seek a VL.

Why? bec ulitmately the threshold for seeking VL was kept very high- there could
not be clarity how the negotiations to end. but if someone has made an effort for 6
months and not been able to get a VL- it should be sufficient.

C asked bayer on record for grant of CL- bayer said no. bayer did not say yes and
then asked for further info. natco does not need to comply with all the
requirements. at a stage you need the information to fructify. the crtieria- made an
effort and intention was showed. 6 months statutory period. factually depends.
in another case- prima facie, CL denied by controller because efforts not made.
BDR pharma vs rosche. but never appealed. controller decision based that BDR
did not reply to the details asked for, no communication from P holder to not grant.
the courts than can impunge bad faith. YP- this is a procedural requirement and
most countries would try and comply with it because TRIPS requires it in art 31
stating that some reasomable efforts should be made.
CL- exceptional, and if the person si willing- then why not as it diminishes the core
value of the P holder. BDR- company which had applied for CL on another cancer
drug was rejected primarily owing to the fact that there was no bonafide intention
on part of BDR to obtian a VL on the ground that compliance with VL- the kind of
info u need to exchange in good faith ought to be exhancehed. problem-
sometimes countries do not want to exchange this info. if BDR got the approval, it
does not stop the patent holder from gtoing to court and asking for an injunction.
these injunctions act as anticpatory bail- before actual ifnrignemtn takes place.
before you take approval- you prove intention to infringe. this intention at future
point of time- is sufcciency time to grant injunction. quia timet injunction.

cancer drugs priced high because you take them for a few months.

Class notes 100

 another application made by Lee pharma on anti diabetic drug. volume of drugs
consumed is always higher- time duration high. lifestyle related drugs.

take from here

s92- their argument was this section was notified under the disaster management
act. so if covid 19 emergency, they could anyway go and directly ask the controller
for the relevant license. this was withdrawn as lee granted license to natco. even
before this, eli lilly was granting license to 4 other companies in india. this
application was made.

07.10

Supreme Court decision durng COVD- however it practically says nothing- SC

took it upon itself to take suo moto action depending on non availability of
vaccine. covid 19- various kinds of vaccines introduced based on phase 2 trial.
phase 3- full clinical trials. in india- apart from covd vax, docs prescribed other
kinds of vaccines like remdisivir. elili included. but they were not covid 19 drugs.
the question is- you want to expand manufacturting- questioned why GOI not
issuing CL. Vaccines- biological products, you need to know how to manufacture
them. unlike chemical pharma products, in case of bio substances you need
sophisticated reverse engieneering capabilities even if u want to copy to come up
with indigenous medicines. many companies are not involved in vaccine
production. the only L granted then was astra geneca to Serum. these vax are of
diff kinds of platforms- bharat - activated/inactivated virus. astra zeneca- protein
based. even with the grant of CL, there could not have been enhancmenet of
production as CL remove legal barriers to copying but the main issue is structural
barriers to copying- the know how. the original company making the product can
give it- the tech was transferred to india by astra. but in case of MRNA, long list of
waivers needed. there was no active tech transfer. MRNE patterns must be
busted. very latest, introducted only during covid. there was public policy

Class notes 101

 discussion on granting CL and the govt should not create impediements but the
SC did not answser the know how component. the tech lying w moderna pfizer in
diff countries- simply by granting CL you cannot achieve the goal unless there is
active tech transfer. making the vaccine is the real know how which needs to be
transferred. SC does not consider this being one of the critical situation because it
does not consider the know how which is the structural barrier to the entry. this is
the problem withbthe SC obsevations.

NITI aayog- clarification- even if you grant, diff to manufacture. first time in
histpry- many tech platforms but less downstream manufactures. it is always the
reverse because vaccine manufacturing has been done by v few firms in the world
historically. demand, supply mismatch. this is why no CL were issed in context of
covid.

Remedies:

take the form of:

1. injunctions- remedies in equitieis

2. accounts for profits and damages

injunctions:

4 types:

primairly- 2: temporary and permanent but in relation to temporary injunctions,

you have

1. quiatimet- injuncations granted based on the apphrension of the def infringing

on the patent. recent case- zydus vs rosche. zydus along with dr reddy
wanted to come out with a patent infringing product and there wsa already
litigation going on and zydus went on record to say it is not going coming out
based on approval from CDSO but utlimately the plaintiff found out that zydus
did get an approval and were in talks with dr reddy to launch it with reddy.
court granted based on the fact that def had got marketing approval. how do
you know if marketing approval is received? recent case qere quia granted

Class notes 102

 based on the fact that the def had pbtained a marketing approval. it does not
matter if def has gone to the market, as long as approval there- intnetion to
infringe is very immediate. no idea if the drug would even be infringing. one of
the major problems in these injunctions- since no presumption of validity, no
clue about the scope of the patent. whenever such inj are granted, granter
under the belief that the patent holder would succeed. these are even more
problematic- s107Aa wrt regulatory review- bayer v UOI in which the q was
regarding whether exporting small qts of drug would be infringment or
covered by an exception. court widened the exception to say that even export
for the purpose of regulatory trial, you would end up infringing on smaller
quantities of the drug. effectively, companies seek defence under s107 but
quai take away the defence automatically as the market seeking approval
becomes a ground to deny. thesd inj are granted frequently when such
regualtory approvals are sought as defences under s107 become non
operational. the provision allows early entry of generics.

2. ex parte - contrversial in patent law because one imp reason- pateny

infrignemnt requires sophistacted parties primarily because to infringe and
manuf- you need substantial investment, credibility, name in the market.
conversely- trademark- counterfeting and piracy is easy and you do not
sophistication. fly by operators at night. investment required in manuc. most
commentators ignore the fact that in P inunctions- you are not enjoining the
manuf but the distributor who could be the fly by nigh operate- it is not just the
manuf in the entire value chain as the manuf takes place in some country, if
importation hapenning here, there could be a chance that even in P
infringemnt cases, fly by night oeprators. what is the harm? in countries like
india, takes time to vacate the ex parte. cannot go to the market. secondly- if
you are producing a product, it may ahve multiple P, including the defendent’s
own. how are you then stating that this remedy you have granted is
proportional? proportionality matters because in a downstream product- it
could be a case where the remedy could be disproportionate. stopping the
product from getting into the market. the defendent has to see to remove the
product from downstream and then go to court- defendent has to innovate
around the product. injunction only for p granted and working around will tkae
more time. elast amount of time needed- 6-8 months till the time DB decides
to vacat. hence they are controversial. ex parties can be against distirbutirors

Class notes 103

 alone- if manuf not india. masking of the defendents- suppose CIPLA
defnedent and it is rosche vs cipla- cipla looks like a sophisticated player. they
mask the company by suing their legal counsels- it is a strategy to show the
defnent in poor light. not getting into making the company the def in the first
place. qui turns it on its head- controversial- granted on the fact that you intent
to infringe on the patent and make commerical qts of the drug but thats
exactly an act that is not considered infringing under s107a.

3. ad interim- where the parties are heard. controversal. most jurisictions dont
grant ex parte or ad interim- without trying the q of validity of infrignemtn, a
temp injunction would disportoational and nhot be in equity. these are
remedies in equity- courts have jurisdiction. most jurisications instead fasten
the process of deciding the validity of the injunction itself. ebay vs merc
exchange- permenant injunction, they dont even talk about interim because
their period of litigation is very short unlike india where the trial takes time to
be conlcuded. the SC- where the court satisfied that BOC lies in the favour of
the defendent, not necessary to pass an injunction. rattled the patent world.
but statistically- when infringment, injunction gramted. exception- defendent
who is actually in the market rather than the P who is trying to monopolise
asking for licenising royalties. US- just bec there is a valid P where the validity
has been established and has been infringened, an injunction should be issued
automatically as a right as - balance of convenience, irrepearable harm
(monetry damages are insuffcient to compensate for the harm caused, if
monetary sufficienct then why injunction- hence we need an injunction to
compensate for the harm) and public interest. interim remedies could be
adverserial also- hearing the parties. interim remedies can be ex parte or
adverserial. problem is that the parties will raise a credible challege. if the
courts were to consider presumption of valdiity- indian law does not consider
under patent law. india has not legislated it. only in cases of shifting of burden
of proof- process patents- shifted to defendent first as the def needs to prove
first then it has not been infringed as the plaintiff has no way of fidning out if
the process patent has been infrigned. credible challenge- prima facie
challenge. US- looks at public interest differently. temporary or interim??-
court needs to satisy itself that there is a likelihood of success if the trial were
to be concluded where the plaintiff is able to show the P was granted not
through fruad etc- the court can satisfy itself that patent holder will be able to

Class notes 104

 show infrigmednt on merits. india- mini trial in interim injunction- where you
hear parties based on written submissions without taking evidence. various
grounds the court says the P is likely to be valid and infrigned. this is adversal.
ex parte these questions dont arise itself. the other reaosns why courts grant
interim injunction other than period of trials bec the courts are convinced a
trial is complicated in context of a patent. courts do not want to get into that
technicality.

how do you assess these factors? smth ehre about balance of convenience in
favour of the defedent. this is irrespective of the fact that lack of working is one of
the grounds for granting CL- s84 yet the courts said looking at old cases from US,
UK- if there is judicial discretion to find out BOC- it is imp to know if the def is
already in market, and plainfirff not manfucaturing- do not grant, BOC lies in
favour of def. france zever case

rosche vs cipla- SJ, DB- injunction, SJ- on infringemnt and validity, DB-
infirngment and validity. we are dicussing- DB on injunction. rosche has patents
on Hcl which manuf a product called tarseva and the product contains a mixture of
polymorph a and b. cipla came to the market with polymorh a. sj- ravindra bhatt in
2008 says that as far as prima facie case is concerned- plaintiff has satisifed that
it is going to succeed on trial primariyl because plaintiff patent covers a and b and
defnedent infringemed b. court refuswed to grant inju- citing public interest. as
per the court- one of the factors in finding out BOC is to whether public interest is
disserved. court says it is disserved by vritue of immediate cutting off access for a
cancer drug. diff in prices btw plaintiff and defendent. on the ground of pricing-
public interst could be disserved if the plaintiff is granted an injunction. goes to
appeal- in appeal- division bench disgrees with PF- the defendnt has produced
enough material to show that what is it producing in the amrkeet is not an
infringing verison but for something a mapatent has not been hranted. roshce- a
and b, also filed a patent of b which was rejected based on 3d. cipla- if
polumoprht b is in public domain, no ifnringment. hwoever- when the trial was
conducted the DB came to a conclusion that the initial a and b patent would be
infringing by cipla making just polymorth b. but at the time of granitng inj- DB
disagreed with SJ- as the SJ had no apprecaitated the vanvass of facts inlcuding

Class notes 105

 the fact that trosiche had filed an application. based on that the court siad the
prima facie case is being made by the [Link] only disagreement- SJ is
saying the prima facie in favour of plaintiff but bec there is public interest, BOC- in
favour of defendent as the defendent is in the market who is manuf at a cheaper
accessible cpst. DB- there is acreidble challenge to the avldiity as when rosche
applied it was rejected, cipla- hence it is lilely that is it not infrinemtng. but they
agreed there is public interst bec there is diffin pricing- same reasoning by SJ is
valid as ocurts have the power to interpret public interest. DB- if the defnencent is
able to show a credible challenge to the credbility of the patent, SJ did not
consider that rosche patent was rejected- exactly the version amnufactured by
cipla. on ground of prima facie case which is storngly in favour of the defednent
APART from the fact that from the BOC the court has also said that the public
itnerest would be disserved.

one of the problems by YP- too simplisitic to attribut that public interst would
be disserved bec any would produce medicines based on cost- if cost- is the
benchmark, this argument can easily be takne. so how will the court want to
consider public iterest: Apexsba case- bristol BMS vs indolco 2022. if the
standard for not hranring is so lose- the court could cite public itnerest- the
court has incentive. the court idk, unable to show us why public interst has not
been to serve by BMS- if that is not show, cimply citing PI would not lead to
denail of inj as far as plainriff is concerned primarily because the plaintiff is in
the market, has lincese, various options of those varying so there is no case to
show that the demand and requirement the public has wiht this drug are not
being met. hence- court concluded- not concerned with q of pub int. came as
a strong decision by j harishankar during the heights of covid, any other judge
must have cited with covid thinking what could else be public interest udring
vocid. this decision is as per YP- unique considering the peak of covid with
courts clarigying how there is lack of access and affordability to the drug.
injunction not granted.

8.10

what is an imminent threat? qui inj historically granted in the context of real
property by seeing its origin thru UK and canadian decisions. however if u extend

Class notes 106

 it to IP, there are problems. in case of P- they are not presumed to be valid under
indian law by the patent office. vishwanath radheshyam case- unless they are
conclusively validated or invalidated, you cannot say. in such a situation- it would
be unfair if qui inj are granted on the basis that a marketing approval has been
sought. it does not put an obligation to manufacture / stockpile. infringemnet and
you fall out of the scope of 107. are qui injunctions then compromising on the
defences available?

how does the court construe BOC? rosche vs cipla- price difference of 300%,
court said that it was imp to consider public interest implication in terms of cutting
access to drugs. quite opposite is the DB decision in Merck Sharp And Dohme
Corporation And ... vs Glenmark Pharmaceuticals - diabetes drug patent.
glenamark directly launched the drug making its salt form. it argued that the patent
did not cover the salt forms and was outside the scope in manufacturing it. the
argument was that there is no prima facie case by the plaintiff and def reached
credible challenge. DB reached a diff conclusion- in making the salt form, you
have to use the free based molecule that was granted patent by merck. the salt
form of a free based molecule to be. that is why prima facie case exists. BOC-
court examines in detail one of the first questions- including just bhatt’s own
decision in orsche vs cipla wehre due to cut off access, inj was not warranted-
confirmed by DB in rosche. here- just bhatt takes a u turn on his findings by
stating that public interest would depend on facts and corcumstances. this is a
dibetes market- type 2 diabetes has a lot of alternatives. rosche dealt with a
cancer drug. an inj is not warranted, there would be entry of a company like
glenmark at a reduced cost- not 300 percent but 10. the court is trying to say that
the defendent’s entry would lead to a price collapse after which the def will not be
able to enter the market- hence BOC should be in favour of plaintiff and not
defendent. primarily bec the drug market is diff from the cancer drug market.
secondly- price diff is only of 30%. thirdtly- there is no immediate threat of cutting
off the drug as alternatives to the same drug is available. also- if the def is allowed
to enter, there is going to be substanital price erosion which cannot be
comepensated later. once you lose the market by puyying the drug at a lower
price, the dug sales would icnrease but u will not be able to figure out the real
sales had the drugs been put out that price. YP explains this, the court does not
get into this analysis. if the same version is available, it is assumed the cheaper

Class notes 107

 option will be chosen. competition intense in the diabetes market, any entrant
would be successful, the court observes. the patent holder can compensate
glenmark by the potential losses sufffered, hence temp inj granted. idk this
economic analysis, ask someone

telecommunications-

this is ind is diff, as unlike pharma patents where there could be free based
molecultes etc- these P are large in number. a single phone- 1000 patents. these
devices in telecom ind are called multi component products and they incorporate
diff technologies not related to each other. ultimately- all tech gets incorporated in
a single phone. a company indv also holds a large number of P. these P not just
about the hardware. it is a funciton also of software. when you optimise your
software, it enhances battery life, increases memory.

standard essential patents: can be on any kind of communication devices, tech

like bluetooth, wifi, 3g, 4g, they can also be on non communication tech like USBs,
ports. spectrum that is granted is a natural resource, hence limited. in the limited
granted, telecom companies want to extract as much as possible, fast. smth here.
data packs efficient use of spectrum. hwoever, in the market, one single company
is not able to solve this challenge- people come out with bits and levels to the
challenge. diff companies come together. standards are set- unions. there are
several iterations of standards, based on voting- to maximise spectrum efficiency.
the argument here is that standard related patents are called standard essential
patents as whoever is implementing the standards- they all have to get a L from
the patent holders whos tech is consdiered essential and standard. once the
standard is set, it is made for wider adoption. you dont want people to lock into
different standards. fair reasonable and non discriminatory terms- FARN terms??
apart from agreeing to the fact that they would agree to offer a license on these
terms- but what these terms really are - not clear. it is a win win situation- fi they
fix a rate of royalty, patent holder discienevitsed as they dont even know the
future prospect of the market. market adoption. they say they are only doing tech
development, not entering into transactions with implementros. SDO’s IPR policy
requires disclosure of all essential patents in your portfolio. if standards are to be
implemented, how many patents would be influenced.

Class notes 108

 disclosure- patent holder required to disclose it consdiers in good fiath that if a
particular stnadard is implemented,t hey might infringe it. something from here.
intex vs erricson- intex argued that the patents granted invalid but once there is a
FRAND committment gievn by the ph in a standard setting holding, courts not
bound to grant interim inj.

FRAND- for receiving royalties. standard setting holdings- form and implement
standards. if the patent holder was to not grant on FRAND, there would not be any
market adoption. but what these terms are- is left to the market. hence
negotiations start with defendent. the price varies, the royalties differs. def are
worried if they more royalties, they will be shut off so they want the rate given by
PH to downstream players. the weapon w the pH is to file a suit for infringement
as the negotiations are not rurning out to be frtuiful. interim reliefs in FRAND
should be caustion- you have already agreed to be compensated and not injucted
as such. but if we proceed directly on merits, too long, so middle ground- itnerim
royalties. they are calculauted based on comparable licenses offered to other
markt players- examiens tose royalties and then the courts are required to come
out with similar royalties. if def are anyway required to pay royalties, why should
the court grant int inj? FRAND cases, inj should not be granted as per intext as you
can pay them reasonable royalties. if a situation exists where no inj is granted,
there can be a market erosion based on the number of units- we will enter into
protem orders that are temp remedies that we will come out with a way thru which
temp royalties are come out. in trial- give them actual damages. until then- interim
royalties. why- in these cases, pltf required to show negotiations have been going
on for years- largely longer time for neg to conclude, def is dilly dallying- unwilling
licensee, not willing to negotiate then it is upon the court to grant a TI but it will
stop the def from going into the market whihc is a disporpotionate remedy- so
hence interim royalyies. once thesr toyalties are not paid, the inj will come into
effect. from the date of actual infringment till the date of filing of the suit, till the
interim inj kicks off, till the final trial- there are diff kinds of remedies granted by
the [Link] far as future royalties- court’s escrow account- court is going to
release it depending on who wins on merits after the trial is concluded. these
remedies diff from pharma bec here- if ther is a FRAND obligation on the patent
holder, a grant of inj- disproritonate remedy- hence the court has devised a
emchanism of apying interim royalties. what if the plaintiff fails on the merit of the
case? court requires bank guarentees to be guven bhy the patelt holder as a

Class notes 109

 counter emasure so that if you have recieved certian toyalties and you failed on
trial- you have to recover all tjose royalties based on this inteirm remedy. this is
how the court examines equitable factors. bajnk guarenatee- paset rpyalites paid
to the PH. interim royalties- very specific to indian jurisiction. FRAND- worlwdie
mutli biollion litigationa rea. in other juris- trials conclude in time, the court directly
procees there.

in frand cases interim relief= interim royalties

ASK HIM ABT BANK GUARENTEES!!!

9.10

they are standardised as many companies come with diff pieces of tech and that
does not solve the problem- they have to work in combination so that a systems
level challenged can be solved.

smth from here

in many countries where SEP are litigated- refuse to sign NDA- bound by no
access to similar comparitive rates, cannot disclose rates or get to know about it.
they dilly dally- to extend negotiations. it has been noted that the term of
negotiations went on for 2-3 years.

interim injunctions- concept of int royalties- courts just find out whether there is a
prima facie case, have done a mini trial by looking at patent technology, whether
there is an immediate challenge, whether those P are eligible in india- all drawn
from evidence and not cross examination etc. they decide whether it is likely the
PH will succeed on trial. one of the imp factors- question of irreperable harm.

Class notes 110

 in ericson vs intex- argued by intex, if ultimately the court has to decide a money
suit- FRAND suit- why not move away straight to trial, conclude and award
damages. court said no- they could be an IH if you come to a conclusion that in all
frand related disputes there will be no inj. it has to be determined whether the
plainti has been a willing or unwilling license by looking at both parties conduct
and if they are negotiating in good faith. eg- plainiff sent demand notice- did you
reply to it? was a second one sent? secdonly- if you did reply to it properly, did the
plft make a frand offer? were you required to sign an NDA as it is one of the first
steps in negotiating. supposed you signed it and the pantiff offered royalties, did
you respond to that offer? counter offer? any evidence given as to what the royalty
rates could be? if all these steps are not undertaken- it is seen if a party has
defaulted- once the def is established as an unwilling licnesee- the next stop is for
the court to decide whether to grant an injc. for eg- intex said no interim remedy,
move straight to trial. after the conclusion of the trial, determine FRAND damages.
court said no- if we go by an assumption that no inj can be granted in such cases-
causes IH. what is IH? there are 100s of licenses of PH, they are negotiated once
in 2 years, markets are so volatile so you do not know if you can have long term
contracts. neither parties want to have a longer term duration. court says- if these
licnesers get to know that indian courts do not grant inj, they will not want to grant
the L. they have incentive to come to court to litigate that the terms are not
FRAND. the other lincesees would be discinectivsed from granted a license- it
would cause irreperable harm. if there are other players in the market and if there
are no remedies granted at this stage- then they would be under this impression-
to negotiate based ?? rather than real market terms. this harm is irrperable
because of lost opportunity to license in the future.

on the q of BOC- court said, in case of FRAND disputes- what is ultimately asked
is money and if we grant an interim injunction straight away, the whole idea is the
def is prevented from manufacturing- shutting it down. if the case is to pay the
PH- inju only granted based on one condition- interim royalties. inj granted in lieu
of non compliance of non royalties set by the court. otherwise an inj not kick off- it
will only kick off when the interim roy are not accepted by the def. how did the
court arrive at int roy?
either there is grant or no grant of temp inj but here the court has come up with a
midway as these are not normal patents but standard patents- if inj is granted, it is

Class notes 111

 dispriotiante remedy. a downstream product wiht 200 patents will have to stop
production. injuncting not just vis a vis PH but against the entire downstream
product. so how do we come up with a balanced formula? dispr remedy if you are
stopping the def from going to the market. with every successive standard, older
are out of it- that is how markets work. court came out wiht the concept of IR-
based on comparable licenses. out of 100, ericsson presetned 20 licneses, gave it
to the court in sealed covers, only for the legal eyes: courts and lawyers. lawyers
are bound not to disclose to the parties as otheriwse the parties will not negotatie
base don the requirements and companies goodwill but based on what is offered
to others. that is why NDA strikes. any negotiation starts wiht an NDA as PH want
to price discriminate between players- cannot give the same rates to samsung and
other players. the only question is whether out of those 2-26 licenses- are those
parties similary situated? based on these comparable royalties, the court came out
with interim royalties. from the date of demand- when the infringment began till
the date of suit filed, institution. from the date of beginning of suit till the award of
interim royalties. from this award, till the end of the trial. for past royalties- those
can go to the plt as an immediaite royalty. those determined in the court of trial-
deposited in the esceow account. in return- court asks plt to submit bank
guarentees as if the plft does not succeed on trial, def is already harmed- how will
the def recover what is already paid? these guarentees are released in 2
situations, taken back by plft:

1. either after the itnrm royalties are granted and parties do not want to proceed
to final trial- consent order btw parties. major thing in india- companies do not
proceed to trial, enter into consent order. settlements are majority.

inj automatically follows if you do not comply with the conditions stipulated- why-
bec the court has given interim royalties in lieu of an inj- which is too strong a
remedy stopping the def from going to the market.

once the court proceeds on trial- analysis if the P has been infringed- cases of
exhuastion- before licensing it to me it was already licensed to intel and i imported
those chips- courts have found this to be in favour of the P. the patents picked by
the PH to sue- are the strongest ones from their portfolio. these challneges then
come on grounds of validity- for eg no inventive step. next- the question of
infringment comes up. infringment analysis the court applies certain doctrines-

Class notes 112

 whether the produc of the market are infrigning on the claims of the PH. then-
remedies. s3k ferdinant, doctrine of equivalence etc- court uses various doctrines
to see whether the PH has a valid claim. there is a claim construction that is done.
once infrignement is established in trial- the q is about awarding royalties- why?
because inj issue out of question, parties have mode to trial, no settlement of
dispute. for trial- many qs raised due to damage calculation. s108 of patent act- inj
accounts for profits or damages- altnerative remedeis. accpunts of profits-
whatever profit is made by the def infringer, needs to be disgauged those profits
so that you can get the cream. however- usually in IP cases, not asked by the PH
as there is a possibility the profits is lesser than the damages occurred due to loss
of market. had it not been for the infringer- the monopolistic product would have
earned higher revenue. hence- they ask the court to determinr damages. FRAND
damages- court determines fairenss and reasonabless of these damages in
FRAND cases. in all these cases- there are few arguments made by parties.

recent case- ericsson vs lava. ericcson serial litigant. lava had the courage not to
settle and move to trial- second such trial in SEP. previously- another trial vs
philips vs rajesh bansal- SEP based on DVD. DVD players have their own internal
standards. lava- the question of whether the def is required to pay for all its
phones or only in cases where the plft has tested the phones and has done a
product claim analysis (where the plft claims are mapped on the defs products-
classic technique to find out infringment) erricson had done this one 3 models of
lava. lava- damages should then be calculated on the sale of these 3 models as
the infringement done and evidence produced was only in ref to these 3 models.
court said no- on all the models being sold in the market, wheever you have
mentioned 2g, 3g compliant you have used ericsson’s patents. the moment you
are mentioning the usage of 2g, 3g- you are ingringing on plf’s patents. all thoswe
mentioned- those will be the models used for the calculation of damages. if you
have implemented 2g. 3g here and there is infringiement but based on
prepondernace of probabilities- there could be infringment.

second point- lava said, the damages must be calculated based on what is called
as SSPPU- single saleable patent practicing unit- whenever PH license their
patents, the royalties that they demand are on the hand set / price of the hand set

Class notes 113

 or the mobile devices. hand set- hand held device. in the hand set there is a chip
set. SSPPU means that the PH is required to licnese based on the fact that these
2g 3g tech were implemented in the chip set- that is where the point of royaly
should be. smth here. why is lava arguining this? they were not manuf of this techn
or first to introduce it- it was the manfuc of the chip sets- then ideally whatever
the idea of the price of the chip set was - that price must be considered for the
determination of % of royalties vis a vis what E has demanded- it does not matter
the orice of chip st but what matters the price at which lava is presenting the retail
prices in the market. lava- this is not fair or reasonable, primarily because the 2g
3g tech remains the same- whether i introduce it in 10k or 50k mobile phone. smth
here. entire market value rule- to see the entire market value of the product
incorporating the market. erricson- EM, lava- SSPU. court- erricosn- as erricon
has been able to show this is the market practice and that there is no reason to
deviate. what is the contribution made by lava to this tech? if the tech remains the
same in diff models, why should the PH by disporportyionaly rewarded. E- the 2g
3g tech are not used in isolation. they are always usde in combination with other
tech. theri argument- 50k phone better touch screen vs 10k- the value of the 2g
techn enchances when the price of the phone increases as the other components
of the phone also increases. the potential of the consumer to derive these techs
enhancfes based on the end value of the product- hugher the end value better the
satisifaction. better durablinity. battery draining not draining. u may say what is the
rship? higher the battery life higher the consumer derived value and satisfication.
consumers derive better value as you price the phones higher therefore- end
value market rule rather than the price at which the chips were sold.

III. question of what royalties to be paid? the court again goes into several models
of calculating royalties. lava argued that the R must be calculated based on a top
down model wherein lava was simply saying that if we are implementing 3g
patents- there are 15-20 owners, if we are to negotiate and pay R to each one of
them- imagine the royality stackinh- the total royaly paid by lava to each of these
indv. dont do this- come up with an approximation of the value of standard and
then proportionately divide. standard is the top and you go below- down- pay
each of these PH. court said- lava not produced any evidnece of any R stacking,
whom are the other companies they are neogitating with for 3g standards, cant
implement this model. because the first step is to place a value on the standard

Class notes 114

 whihc is a very diff task. lava said see solar ind- court said no, they are diff tech. in
mobile phones, this is a central tech. otherwise it becomes a consuming and not
communicating devnice. cannot consturct a patent pool of other tech to follow
another model. court said- we will look at the comp royalties of similary sitautd
parties where ericson licnesed similarly situated parties- 1.3% royalty rate to be
paid by lava to erricsson. one of the biggest awards- no. of units sold by lava
essential component.

Strix vs Maharaja- damages in regular patents. kettles used for boiling water.
heating system at the bottom- P belonging to strix on these heating devices.
looked at the entire portofilia of defendent and siad 180 crores of sales made-
proprtionalty divided the units to find the number of products where the P tech
was used. court siad- if u do this, maharaja would end up paying more damages
so they randomly divided it into half- 50 lakh of damages to be paid and additional
30 lakh of cost. one of the criticism of damage jurisdicprudent- ther eis no clairty
on the actual amount of damage or lost to the PH- it can only provide the
approximate cost of what it would require them to manufacture this small
component of tech. one of the major cirtricism- how PH are able to asser that X
amount of produts would be sold had the infringment not taken place. it is only an
assertion, no clairty. another case- TAM reports to estimate future potential sales.
damage analysis is unclear and criticsed.

last class take notes

10-10-24

REQUIREMENT OF THE TRIPS AGREEMENT in Article 27.3.b: EXCLUDE PLANT

AND ANIMALS. IF YOU ARE EXCLUDING PLANTS THEN EITHER PROVIDE SUI
GENERIS PROTECTION OR BOTH FOR PLANT VAREITIES. Article trips. T

here are various kinds of traits in relation to plants that are useful. There can be
various benefits for plant varieties, saline resistance, strength etc. Like the height
of the coconut tree. Any particular trait can be trait wrt to a variety. These
happens through cross breeding for getting to the desired variety which is
different. Under Plant Varieties Act itself. Definition of variety under the act. The

Class notes 115

 characteristics must be distinguishible. After you sow, it should not change with
the traits.

What could be the underlying basis of this. The definition of extant variety and
essentially derived variety. If you are granting breeders the protection for new
varities then what about the farmers also doing it? For this purpose extant variety.
For extant variety, the other three criteria will have to be seen except.

Registration process: section 15

NOVELTY

The variety must not have been sold or otherwise made available to the public
before a specified date (generally one year in the territory and six years for trees
and vines anywhere worldwide). Novelty you start commercially exploiting ie it is
novel if at the date of filing of the application for registration for protection the
propagating or harvesting material of such variety has not been sold or otherwise
disposed of which means for example if it's a great variety you have not sold the
seeds for the harvested material that is the wheat in the open market OK has been
not sold or otherwise disposed thereof which means sold or otherwise disposed
thereof in the sense that there must be an analogous activity of such nature such
as selling of biology the consent of its freedom which means if somebody does it
without your consent that's not what we are talking about and it's quite likely that
somebody would do it without the consent because when these actually when the
trials etcetera are done it is quite likely that you know if it is being smothered or if
it is being sold otherwise without your consent then that would not be around for
seeing that your variety is not registerable because it is not known anything that is
done by you only will be considered As for the purposes of determining the
question of novelty similar to practice law
you remember in the exceptions to novelty everything that was mentioned was
whether there was a consent by the patent holder or the patent holder you know
released the invention and this becomes prior art so here also you're going to
examine it first similar perspective as to the conduct of the applicant with respect
to selling or disposing of the propagating or the harvested material right
propagating materials the materials that you use for growing harvested material is
the harvest and harvest which can also be used for growing for example in certain
cases it means of a particular tree can be used or product can be used but legal

Class notes 116

 but there are exceptions to knowing what are the exceptions to novelty of course
exceptions are later but how many if this selling off has been done in India the
name of a part of the propagating or harvested material is done in India prior to
how many years should you file the application within one year from the date of
commercial exploitations that is in the sense selling off you should file an
application in India OK if the commercial exploitation will happen abroad then how
many years do you get you get in case of trees and wines six years or in other
cases four years you may ask why a distinction between trees and wines and you
know others any idea why absolutely because trees take time to grow right so
they don't immediately it's not like any other variety which grows in few months
but they take time to grow hence an extended period of commercial exploitation
prior to the date of registration application for registration has been allowed in
case of trees and markers right four years in all other cases now there is a
discrimination then for India commercial exploitation in one year and for
commercial expedition abroad 4 years generally why this form of discrimination
between India and commercial exploitation abroad any idea simply because this is
a regulated sector you can't just import these without proper compliance with
regulations so it is very clear that if something is available abroad in terms of
commercial exploitation it does not automatically mean that it is available in India
but why we are concerned and giving less time for commercial exploitation in India
is because the farmers may have already started using it because it's easier
availability but if it is exploited abroad then naturally it is not so easy to import
those seeds into India and start growing them so hence commercial exploitation
abroad has not how much of A consequence with reference to the accessibility
and availability of the seeds to the farmers but if it has been commercially
exploited in India it could be easily accessible that's why the period is set one year
is the commercial exploitation has happened in India makes sense and when I
mean commercial exploitation it is only in the sense of being sold or otherwise
disposed The entire breeding method is based on trials as I mentioned to you it's
not the first time you breed and you get it you get a desired result you have to do
repeated cycles of propagation and then you get the required desired desired so
for example there are all these names #27 #28 which means the 20th time it got
successful as to what the desired result is prior to that this is all trial that is going
on with reference to coming out with a variety makes sense to you because in the
first goal itself if you put two parental lines and you can't get your desired the
desired traits are developed by virtue of then selecting from those successive

Class notes 117

 generations planting them in reviewing and then you get the end point get to the
endpoint otherwise plant breeding is not an exercise that is done in one cycle of
propagation makes sense you have to do repeated cycles so try yourself anyway
excluded from the from the . question of novelty then what provided further that
the fact that on the date of filing of the application for registration the propagating
the harvested material of such variety has become a matter of common
knowledge other than through opposite means shall not affect the criteria of
novelty of such variety what are other than of course said means what are the
aforesaid means selling or otherwise disposing of so if it has become a matter of
common knowledge by virtue of research publications by virtue of any other kind
of activity in relation to bleeding that shall not be considered as hitting the novelty
in your application does it make sense to you why this has been done what is the
rationale any idea ohh we could be based on the consent because here they are
not saying that it is not without consent they are saying that we are filing of the
propagating of the harvested materials such variety has become a matter of
common knowledge other than through the foresight manner is because you might
publish it in terms of research and somebody might want to reverse engineer and
has come out with the same thing and might be available and might have become
common knowledge so there may be other means through which you can have
access to that knowledge with reference to the variety but all that has been
excluded from the perspective of novelty or novelty what would matter only selling
or otherwise disposing and otherwise disposing would be only in commercial
terms while what is the principle of interpretation of statues: ejusdem generis.

DISTINCT

distinct if it is clearly distinguishable but at least one essential characteristic from

any other variety whose existence is a matter of common knowledge in any
country at the time of filing of the application here what are you going to look at in
terms of what is available in common knowledge vis a vis at least one trait must be
distinguishable and what is a trait the trade could be high yield seedless etc.
THERE HAS TO BE DISTINCTIVENESS of the trait. Explanation: UPOV is an
abbreviation of Union pour la Protection des Obtentious Vegetals (Union for
protection of new varieties of plant). It is an international convention which
provides a common basis for the examination of plant varieties in different
member States of UPOV for determining whether a plant variety merits protection
under UPOV or not. India is not a part to the UPOV treaty. There are two versions.

Class notes 118

 1991 version is the restrictive for our capacity of the farmers rights. So for the
purposes of language difference does not become a or the members of the WTO
are not a convention countries there is a definition that is what is the definition
convention country which is based on the reciprocity idea. 16 common knowledge
only prior to the date of applications being filed in the first country so suppose if
you had a bilateral relationship with you in that situation if the application was first
application to the same variety that has been filed in India was filed abroad in that
case what are we going to say that because it is the conventional currency UK is a
conventional country which we have our relationship under section 2F as far as
common what is the common knowledge variety is concerned it should be date
the date of application otherwise so then UNIFORM If you look up greater size
manuals you can't have half of the tree giving you small size mangoes and half of
the tree giving you makes sense makes sense why primarily because it has to be
uniform which subject to variations that we may expect expected from particular
features of which propagation it is sufficiently uniform in its essential
characteristics that it used the same . you know the leaves are the same the other
factors are the same the yield is not disproportionate methods to the same size
the lock propagation stable is different what is stable stable with if its essential
characteristics remain unchanged after repeated cycles of propagation or in the
case of the particular cycle of propagation at the end of such cycle what happens
you grow in one season second season it grows third season it grows after that it
stops giving you fruits then you consider that the variety is not stable makes sense
all the loyalty would not also be stable for example in the same cycle of
propagation if you start getting the desired traits of the mango but ultimately
before you harvest the mango starts or in non or rotting before its expected
duration before you can harvest sometimes what happens sometimes because of
certain problems with the variety itself the plant may give you the budding or the
flowers of the mango but then it might not end up turned to be a fruit in the same
cycle of propagation it is quite possible that the end of such cycle the variety is
not stable or in repeated cycles of propagation which means second year third
year you don't get the harvest so that's why stability is another consideration for
the purposes of registration for a flight of course how is this done this is done
based on testing what is called as the US testing OK and The US testing basically
you will have to then you know the registrar has to wait for the to use testing
before the registrar publishes that there's some court decisions around this you
can study it later Multiplying nothing linked to the question of the technicality of

Class notes 119

 the variety but distinctiveness uniformity and stability with reference to the variety
itself Section 4 relates to other aspects of the variety why would other aspects be
important for registration apart from technical considerations any idea and what
are those other aspects here what are the other aspects read a new variety shall
not be registered under this act if the denomination given to such variety 1 is not
capable of identifying such variety what do you mean by denomination even to a
variety the name given to our right this is not the brand name this is the name
given to the variety for example FL 2027 or namdhari 32 or anything namdari you
know is what you have these watermelons with the white strips types on it right so
it is called as namdari because it appears like a tilak on the floor so namdhari now
the scheme of the act in terms of the criteria of protection is very clear are there
things that are excluded from the app which cannot be registered yes Section
29(3) taken from section 3b of the patents act. they will introduce genetic use
restriction technologies or Terminator technology to decapitate the reproductive
capacity of the propagating material which means they will genetically engineer it
in such a way so that the seeds cannot be used after once they have given you the
harvest so the harvested material cannot be saved and used in the subsequent
cycle why commercial but we don't want that to happen particularly because also
indian law allows the farmers certain rights with respect to so you know solving
student.

11-10-24 Researcher rights under: essetiallly derived varieties; benefit sharing with
the user.
Section 39: farmers rights

Originality being a criteria for copyright law: eastern book company vs DB modak
2008 case. Pre modak and post modak position. Prior to this bunch of cases,
Autobelington vs rajnesh shibber case, there was aclient list sought to be
copyrighted, sweat of the brow doctrine origins in UK. In 1990 changes in the
doctrine bc this si a weak standard bc not just intellectual labour to be protected
but also the investment and the physical work include. US decision In Feast
Telecom case. Sufficient originality

Section 30 – Researchers Rights – essentially derived variety – there is a system

of benefit sharing with the breeders from whom you take the parental lineage. For

Class notes 120

 conducting experiment or research and the other is for creating an essentially
derived variety.

Section 39 – farmers’ rights –

not just to give he breeder the right but also the fact tha the farmers in India had
had practices which are alien to the material world and the machine industry and
anything done by then prior to the act must be preserved. A farmer who is
engaged in the genetic and
(iii) a farmer who is engaged in the conservation of genetic resources of land
races and wild relatives of economic plants and their improvement through
selection and preservation shall be entitled in the prescribed manner for
recognition and reward from the Gene Fund

So as long as any kind of activities is doen by the breeders and the gene fund
money would be reimbursed to the farmers. Provided that material so selected and
preserved has been used as donors of genes in varieties registrable under this
Act;

(iv) a farmer shall be deemed to be entitled to save, use, sow, resow, exchange,
share or sell his farm produce including seed of a variety protected under this Act
in the same manner as he was entitled before the coming into force of this Act:
Provided that the farmer shall not be entitled to sell branded seed of a variety
protected under this Act.

Now one fo the arg was that the historically farmers have saved the seed to sow in
the next season, they have exchanged sees among hthems and these have been
considered as non commercial activities – the farmer used to keep the 1/20 th
portion of the harvest to use them as seeds for the next season.

Under the act the farmer can still do this but there is a problem – when you look
into these variety once the seeds are sown and grown in repeated cycles of
propagation they may not give you the same results and they may have to go back
and buy the seeds. And where they are able to maximise the seed they would
continue to use them, provided that they do not sell any branded see of a variety.

Explanation.—For the purpose of clause (iv), “branded seed” means any seed put
in a package or any other container and labelled in a manner indicating that such
seed is of a variety protected under this Act.

Class notes 121

 As long as he does not brand it he can sell it – because of consumer confusion –
to avoid that the confusion the law limits the seeds to only not being sold in a
package or labelled and sealed in such manner that it leads to confusion. These
seeds which are saved may not have the same yield which is expected out of the
original companies and that’s why this exception comes into force.

Say you buy watermelon seeds from a company, you keep a portion of the seed
for the next season but your neighbour farmers asks you the same kind of seeds,
you can sell the part of the produce but you cannot put them in a packet and label
them as naamdhari seeds, because this would lead to farmer confusion.
The case between 2015 case – in this case what happens is that the hybrid is
protected as a new variety and the companies also want the seed and the
protection for the parental lines which have certain distinct traits. In actual real
world, these are kept as know how and trade secrets for a long period of time, at
the end of the expiry of the variety you file an application for protection of the
parental lines. The DELHC has come to the conclusion – justice bhatt or bhakru –
the reading of the act provides that once the vaerity is protected you canot file
application for the earlier versions primarily because in the law itself, in section 15
protection is extended to propagating material and if this material is already there
in the public domain, then filing of the protection is not justified. Para – 35 of the
case – the point is that when you are selling seeds of the variety registered under
the act you are selling the propagating material of the parental lines, and when you
have done so you have commercially disposed of in the protection granted to the
variety registered. You get the propagating material of the material of the
protected variety is already being sold off, - you are selling the produce from the
parental lines – once that is done the intention of the legislature is to give
protection to the last line and not the entire parental line. The parental lines
harvest into the propagating material for the variety to be registered. There is
complexity around this issue – in 2019 notification they came up with, they allowed
the protection of parent line as a patent of tradition – coterminous length of
protection with the registered variety.

In Pepsico – the potato variety of FL 2027 – this is very different from the ones we
use at home, but they are very sturdy. It engages in contract farming in some
places and they want to disseminate the variety with a few farmers who practice

Class notes 122

 this, but a few farmers without pepsico having sold them those variety, they were
being sold, they filed a case in Gujarat district court, the suit got withdrawn by
pepsico and settled. Writer Kavitha – argued that pepsico had engaged in
inequitable conduct wrt to mentioning the variety as a new variety wrt to the date
of application. The registrar – then pvfr authority – then high court. At the time fo
registration raised the objection that the time limit had gone and it can be only
protected as a extant variety, and the claims had to be modified but this was not
done so. Kavitha argued that this could be a ground for revocation of registration
under section 34, so it was revoked, the single bench agreed but db disagreed – if
it has been registered as an extant variety anyway, then --- there is no legal effect
in terms of the incorrect information and pepsico did not benefit from the incorrect
information, and you don’t need to revoke the registration. Whatever the
information was filed – the pepsico the protection was granted as an extant variety
and the time for that is 15 years and if they did not benefit there is no need to
revoke. The other argument – grant of registration is not in public interest. 34-h-
how do you define pi – they relied on the incorrect information, they claim with
unclean hands, they started suing the farmers, and it is vexatious litigation but the
court said that if it is vexatious litigation then the standard is very high and you
need to show evidence to prove the maliciousness. Another angle – is that this
becomes a political issue. There are anciliary issues also – process in relation to
amendment, etc. the two important aspect – the conduct of the parties in
providing wrong info and if it in fact it benefited from the registration, and the
issue of public interest.

14.10

6 categories protected under copyright law- s30, def of work in the CPY act. there
are diff qs of how they need to interpreted but the very q of originaility being a
criteria of CPy- hotly debated topics. position settled based on the decision of ebc
vs db modak company 2008

Class notes 123

 modak singifacialy changed the dimension of orignaility criteria. pre - auto
burlingtons vs rajnish chibha- there was a client list sought to be cpy - court said
that based on the sweat of thr broew doctrine- whoever puts in the labour would
be sufficient- anybody who comes up with the list, sufficient origniality- has its
origin in common law jurisdictions but since 1990s particualry, certain jursidctions
like US changed position- this doctrine that allows origniality standard is very
weak. primarily because not asking for any kind of intellectual labour involved
smth here. feast publications vs rural telephone company. pltf came out with a
directory- yellow pages something. court said that if there is origniality in
sequence structure- that could by CPRY but not the data itself. if there is orignality
in the sequence, structure and organisation of the data- that orignality has certain
modicum of creativity but not mere collection and putting together of [Link] is
not with the data per se but seqm structure and organisation.

post feast in 1991- until 2008 we largely followed dweat of the brow doctrne.
rajnish chibbhar DHC case confirmed this. any kind of labour and investment paid
is testmament to the origniality. however- post modak this has been rejected.

in modak- SCC OWNED by easternbook- scc takes it from the wesbite- gives
headnotes, page numbers, editors notes, citations, cross references - also does
editing and proof editing work- pucntuation, syntax, correction of grammar,
paragraph number. the q before the SC was that whether the def that has copied
that plts jmt- is there any orignality in those jmts whihc makes it an infringment.
the fact is that SCC does not own the jmt, its from the courts. as far the law is
concenred- the govt owns under s17 of the act. however- us 52, entire
reproduction is non infringing. now, SCC is a derivative work of the original work
available for anybody. as fair use exception s52 of the act allows it. scc or any
other company is free to take the jmt amd modify it. here- the def copied from
SCC. the def agreed that while there were orignal elements in terms of headnotes,
in other cases wihtout orignality- def argued that employing grammar and
connections present a very low degree of orginiality and skill. court- have to
dsintguishi btw the 2 kinds of skills

1. proof ediitng- routine kind fo work which does not crate sufficient orign.

Class notes 124

 2. intellectual kind

therefore, quire possible that def copying is not infrinehment- if there is no

sufficnent skill invested.

how does the court arrive at this decision?

looked into UK- sweat of brow, US ON MODUM of creatvity whihc could be

extended to high degree of creatvity but not for cpy but there must be min degree
of creativity- term used by the court. adding punctuaations, grammar would not be
sufficjent creavity.

re;ies on canadian jmt- of CCH vs oil smth- similar conclusion saying that the
require of min degree of creatvity foes beyond sweat of the brow doctrine as it
would allow cpy based on any kind of labour inlcuding phusical but that is not hte
kind of orignality cpy should have.

post modak- a lot of applications no this decision- v imp- emergent genetics vs

shailendra shivam, justice ravindra bhatt. in this case- q was based on dna
dequences and whether they are C. they are expressed as strands. a pertinent q
asked by the j- whether it conveys sufficient o? court relied o modak and
concluded that merely bec it has been put together and there is sufficnent
investment- does not provide o. also relied on other doctrines in cpy- apart from o
crtitier- there are other doctrines. one of the most imp- doctrne of merger

doctrine of merger

merger means- wehre there are limited ways of expressing the idea- even
such expression is not protected. even tho cpy distginues btw ideasd ans
expression but in cases wehre ideas and expressions are merged, doctirnw
ould kick in- would mean that those expressions would not be cpy. goes back
to baker vs seldon- 18th centruy classical doctrine. in this case- seldon came
out with a book keeping method, method of accounting- in perofmring the

Class notes 125

 method, baker copied those forms- the court said there are limtied ways of
performing the metho- in that case idea and expression merged. hencem no
ifnringemnt when those forms were largely copied.

in cases where you have to copy something to perform something- doctrne

kicked in

this relies on idea expression dichotomy in cpy. it means - ideas are not c but
expressions of ideas are c. it is rather easy to say this bec whne it comes to
infriment, the def would wan tto ge taway by changing the format, style but
there could eb a situation where what the def has done is purely yaking
concepts and ideas from a previous work and played ir diff.

RG Anand vs deluXe films- 1978 SC. here- rg wrote a play and it became very
popular in delhi etc. it primarily involved several elements of story and theme
evolving around north south divide in india, boy girl love, certain sequences
wrt how the soc looks at these issues wih a parochial lens. played in many
places in and around delhi. deluxe was interested in making a firlm out of it-
spoke and watched the play. subequently, RG- came to know that def are
going to come out with a film called as new delhi. the q was whether the film
new delhi would infienge upon RG anand’s c[y and sctip as it is played and
hence whether the idea expression dichotomy would kick in. except the idea
of org- nothing ha sbeen clearly utline in the statute. they have been created
by the judicayr. only s13 used in the act which used the term O. unlike the US-
wehre mehotds, processes, moes of opertions have been excluded in this
dichotnoy. not in india- due to diff evolutions as we largely followed the UK
model. but this decision lays down a 7 part test and the groundwork. these are
not criters u evaluaye while granting protection but enable the court from an
evidnce perspective wehther there is infringmeny or not as cpy protection is
automatic- do not need to register. regiserting gives procedural benefots and
becomes easier in terms of evidence. but even withhout reg uou can sue.
these can be the def’s argument. in this case- court looked into the film and
play and foundout that although similarties wehre there, also dissilmiarites and
just bec the theme is largely the same- north south, boy hitl- yhat in itself
would not make a ubseuqnwent work infringing work.

smth here- for eg merger doc aparr from being used in emergent, it was also
used in a scrabble case. mattle vs jayant aggarwala. there was a q of

Class notes 126

 whether idea and expression- in cases where there are board games, very
few ways in which game moves can be expressed. court enacted the merger
doctrine.

cenes affaire- french doctrine. if there are incidental scenes in a mvoie- for eg
someone goes to a church, carols being played, ringing of the bells- those are
scenes which are incidentla in narratigng any kind of sewqunce which involes an
idea. the courts have invoked this doctirne and said that expressing ideas in
scenes that are integal in which certain things could be very common- cannot be
subject matter. incidental to the idea of parying. cannot sy that in a narration they
have been copied. the dialgoue delivery, content of the dialogues would matter.
they are so incidental that you cannot delinate them.

smth ehre- ideas so merged toegtehr

cpy as evidence reading - clairty over why these doctrines exist. these doctrines
exist to help the courts discent btw what is infringing anf not idnginrg. like in case
of patent- where you can make a dsitincition, in cpy there is a signifnance degree
of convergence as to why these doctrines are required from the eprspective of
evdience.

doctrine of fixation

cpy would require some sort of permanence- it is expressed in a meidum.

indian law is silent so we say it is not a rewuiement but there are emerging qs.
for eg- there are certain kinds of temp art - water, sand, ice, process of co-
creation. all these kinds of art- they are not fixed. in such a situation- to what
extent temp art becomes a subject matter of cpy law is something to talk
about. we have not had a major dispute involving fixation.

what kind of subject matter gets protected?

Class notes 127

 literary work, artisitc, dramaic, musical- all works which can have infinite
meanings.

in this case- ananda re italics- decision by the registrar of cpy, zakir thomas.
here- type fonts are esesential developed by some creator- there is an author
for these type fonts. imp bec- u can have diff kinds of ways of writing of any
kind of literary matter. if you write something in any typeo form and it is orignal
work- it will be protected. cpy doe snot care which font u use for writing. but
can na indv type form be registered as an artistic work? def of artistic work
under the act- “amy other work oaf artisitc workmanship” reg looks into the
origins of the terminology under the indian law, berne convention, UK laws that
explcitly provide for types. conclusion- berne convention considered them as
works of applied art. if there are wroks of applied art, then naturally they dont
need to be protected as artistic work wihtin the menaing of berne convention.
works of applied art- works wehrer there is an articial novel but there is an
application in the real world as a method- embossing on upholdstry fabric, as
it has an application wrt a product. here- the reg looks into Uk law where they
have a clear exception provided to type fomrs- they are protedcted but term
reduced to 25 years. berne allows for it otherwise the min req is life + 50/60
smth. th reg under the indian law comes to he conclusion that no
correspodning protection there. indian law cannot relaistically interpet. finally
type forms are not protected.

canva question i asked:

1. depednds of the contract signed- terms and conditions under which u are
creating the work. auhtortship with me, onwerhsupwith tem.

2. suitably modified it to be a derivative work

15.10

re ananda italics- not there in the syllabus but still an imp case for YP as it gives
clarity over what amounts to artistic work. typefonts = applied works for art. berne
provides for an alt mechanism. countries that do provide protection- do so
explicitly by providing a limited term of protection for 5 years. india- no distinct

Class notes 128

 term of protection for typefroms, hence the reg came to a conclusion that neither
is there a need for protection as berne leaves it to the countries and the countries
that have provided- limited term duration. other interpretative tech used- reading
the scheme of def of artisitic work. first two paras of artistic work do not pertain to
akin question to protectable typefonts.

there might be an imp policy q - how are type forms then protected? esp how
other countries provide it. how does the industry survive? they are commercially
exploited thru the form of digital products like ms word. whenever new typefonts
are to be introduced- they enter into contracts with these comapnies and licnese
out the work. they license- prior to the publication of the type forms, remain in the
possession of the author, have an NDA, license it as a work even tho it is not a
work under the meaning of cpy as the author is in physical possession of these tf
and thats how companies get the possession. or they could be employees of the
firm- work for hire and derive rights. at the same creator is awarded. ms cannot
sue?? smth here. whenever there is a monopoly - smth here, simply economics
point. the constant power of the creator to make more money doesnt stay. they
get bound. other cases also there- YP will tell which ones to read.

dont do aggarwala- no relation

google case- foreign case on computer programs, does but very briefly
due photocopy- delhi univ case, no relation on the q of whether what was
protected was a literary work- q was entirelt whether the conduct of DU wa
amounting to infringement under eductional use exception. this case is imp for
defences and not subjject matter- literary work.

ajay kumar- not relevant- q of somebody using delhi times version of toi cpy
newspaper by providing a hyperlink. q not about literary work in newspaper.
newspapers do qualify as literart wirk as per YP.

fairmount hotels- no

oracle- does, but v brif

fortune films vs dev anand- vv imp

Class notes 129

 dev anand legendary actor- perferomed as a cine artist in a movie. producer said-
had to pay a very high amoun, to be paid in annuities- unless we pay the annuities,
cpy will be vested in you. did not happen so dewan wanted to stop the release
without paying. the only cuase of action of DA would have would be pertaining to
his contribution to the film. the interpretation of DA was that the cpy of the film
was being transferred to him. but the clause said- your work in the picture would
belong to you. DA work in the film- acting. unforutnatley- when litigated, india did
not have a concept of recongising rights of the performers. they were introduced
in the 1994 amendment. DA had to jusitfyw aht was meant by rights in the work-
rights in “your work”. DA claimed it should be considered as dramatic work. the
court concluded- no the def of dramatic work cannot include performances of
cine artists. this is because- the meaning and def of dramatic work does not
include performances for artists. there is a def of the word for perofrmers which
includes actors. as a consewuence of dev anand not being included- they added
actor. musician does not musical composer- it is disticnly recongised as a
category of work- this is the musician who plays the instruemtns. the musician can
only be a music composer but musician as a performer is diff. does not apply to
extras as there would be a huge compliance issue. Dev anand case dating way
back this amendment. why did the court say that the work of the actor is not
dramtic work?

def of dramatic work: any piece of recitation, entertainment etc. the literal reading
does not explain that the work of a cine artist is within the definition. that is why-
in fortune films, the court came to a conclusion that as far as dev anand’s work is
concerned- it is not a part of dramatic work.

next q- ther eis a literary work written and somebody makes a play out of it. one
is- it can be considered as an adaptation as if somebody;s making a play out of a
written script, book- you can call ti an adaptation. but distinctly, there could be a q
of whether it can be recognised as a dramtic work as well- acadmecy of higher
education vs malini malya. malini was a legatee of shivram kara. he was a great
playwright and performer- came out with prasangnas popular in karnatka. they are
like contexts, scenes. 7 of them were licensed to malini. there were 2 clauses in
the will thay were spiught to be intereprted. will gave residuary works to malini.

Class notes 130

 mahe performed these liteerary works. malini said- should have tken my cosnent, i
am cpy holder wrt htese works. udupii district court concluded- trial court is the
district court for cpy but all commerical courtrs are that now- concluded reading
clause 11 and 12- as far as lit work- clause 11 and dramatic in 12 as residuary works
construed. appelaed by mahe in KHC. they agreed on the q of outcome of favour
of malini but diff reasoning. as far as- the performance of these prasannage by
the higher academcy is concerned, they could be considered within clause 11
which defines literary work and hence we dont need to consutre clause 11 as any
kind of perofrmance of the lit work would itself violate rights og the lit work. clause
11 itself has ltieraly work and any performance of this literary work would lead to
ifnrigemnet. SC disagreed- dramatic works are expliclty recongised. gave a diff
btw literary and dramatic [Link] arg was that no drmatic work bequethed hence
no infringemnt but sc said no- they are distinct works and when clause 23 is read
as redisuary works- we must construe that dramatic works were also bequtehd.
this is the holding. further the sc says- there is no ref that mahe is exempted under
fcir dealing weherien sec 52 applies which they are not claiming- would amount to
infringemtn.

moneky selife case- US case, cpy has required human authorship.

circus q- author of the subject matter must correspond to the def. is circus work
protected as a dramatic work? look it up. whether choreogrhaphc work qould
require humans to be present. as far as authorship is considered- it can only be
human, but can the subject matter be protected?

msuci q- midjourney - for drawing and illustrations- reg the art, US work- in the
book she balbbered on twitter. it was not a human created. the cpy issued
rectification order- as far as literary work is concerned but as far as her pictueres
are concerned- excluced- as she was not the author as she is not the one who
created th work. but if it is computer generated work- it is the compuer- excepted
matter. high degre of input must be there for the computer to be doing the work.

computer- you work ON it

Class notes 131

 AI- you give prompts greeninging

Class notes 132