The Indian Jungle – an IP perspective, part 1

Now these are the laws of the jungle, and many and mighty are they…” – Rudyard Kipling wrote these lines over 100 years ago in his “Law for the Wolves” from the famous Jungle Book. As IP practitioners we are constantly reminded of the complex nature of today’s Indian IP jungle and the many and mighty laws therein. This article will discuss some of the peculiarities of the Indian patent laws with the 1st part focusing mostly on differences in patenting practice between Europe and India. The differences in practice between the four Indian patent offices will be discussed in the 2nd part of the article, incl how clients should use this strategically.

India is a WTO member and has signed the TRIPS Agreement which provides patent protection for a period of 20 years from the filing date of the application. In addition to the typical requirements for novelty, inventive step and industrial application the subject matter of the invention must moreover not fall under one of the (many!) excluded classes from patentability, the best known being the Section 3(d) exception relevant to many pharmaceutically active compounds, which holds i.a. that a new form of a known substance is not an invention unless it shows “enhanced efficacy”.

Indian case law (Glivec case: Novartis vs. Union of India) has established that by “efficacy” is meant therapeutic efficacy which means that arguments for inventive step accepted under EP law like eg. higher stability of new crystalline compounds or salts will not be accepted as “enhanced efficacy” under Indian law. Improved bioavailability is on the other hand specifically mentioned in Glivec as not ruled out as an example of “enhanced efficacy”. Thus some hope still exists!

India does not permit claims to a method of medical treatment, nor claims presented in 1st or 2nd medical-use format. Claims to a pharmaceutical composition containing two or more active components may be permitted, provided 1) all the active components and their concentrations are specified in the claim and 2) support for an unexpected synergistic effect are provided in evidence of an enhanced efficacy of the claimed composition in comparison to known compositions. Such comparative data (ie not stand-alone) must be present in the application at filing in India.

India does not allow for utility model protection, but does allow for “Patents of Addition” which relate to improvements or developments of the invention to which the patent application or granted patent relates; the subject matter does not have to involve an inventive step over the parent patent or application, but must share the same inventive concept and have absolute novelty. The term of a Patent of Addition is the unexpired term of the main patent. No annuity is payable. Patents of addition should be considered as an interesting option for European clients.

Publication of the unexamined Indian application occurs at 18 months after filing; an examination for novelty etc. is subsequently conducted before a decision is made whether to grant the application. Typically this process takes 5-8 years. In contrast to European practice, pre-grant opposition may be filed at the IPO by any party, and without payment of fee. Post-grant opposition may be filed within 12 months of grant at the Indian courts but only by an “interested party”, and can be a very longwinded affair. The grounds for both pre- and post-grant opposition include i.a. the right to the invention.

Once granted, India has a working requirement: Every patentee and licensee has to furnish annual statements regarding the working of the patented invention on commercial scale in India. Importation does not count towards the working of the invention. Compulsory licensing may be granted to local Indian companies in case working requirements are not met.

In the second part of the article we will discuss some further peculiarities of the Indian patent system incl. options for patent office “forum shopping”, the extensive disclosure formalities and compulsory licensing issues.

Michael Bech Sommer, European Patent Attorney

Swedish Government forms Innovation Council

According to a recently published article in the Swedish business journal Veckans Affärer, the Swedish Minister for Enterprise and Innovation, Mikael Damberg, has promised the creation of an Innovation Council during the spring of 2015 which is to be headed by the Swedish Prime Minister. Mr. Damberg states that a Council of this kind has been the wish of the Prime Minister for a long time in order to emphasize the importance of innovation and to strengthen the global competitiveness of Swedish companies. The Innovation Council will comprise, apart from the Prime Minister and other selected ministers, people from the industry and academia.

According to Mr. Damberg, one of the key issues of the Council will be the apportionment of government venture capital (GVC) to companies of interest. He believes that there is room for improvement of the current GVC administration, as a large portion of the capital is not distributed at all or distributed at a too late stage. He emphasizes that GVC plays an important role, especially in the early stages of R&D, when private venture capitalists may hesitate whether or not to invest.

In my opinion, the initiative of forming an Innovation Council is highly promising. I believe that the support from the Council may be specifically beneficial for small to medium-sized R&D companies which often need a financial push for their progress, whether this results in investing in new equipment, hiring more staff, releasing new products on the market or establishing intellectual property rights.

It will be appreciated that Sweden is regarded as an extremely innovative country. The renowned, New York-based Bloomberg site for business and financial market news publishes each year a ranking list of the most innovative countries in the world based on factors such as the countries’ R&D intensity, manufacturing capability, productivity, researcher concentration, patent activity, etc. In the annual rankings of 2012-2015, Sweden has finished fifth, fifth, second, and sixth, respectively, thereby passing the examination magna cum laude. Nevertheless, it is of vital importance to ensure that Sweden’s enormous innovation potential results in new products, services and intellectual property rights, not only for the benefit of the companies involved, but also of the country’s economic prosperity. Therefore, I believe that the most important task of the Innovation Council is to create and develop strategies such that it may constitute this momentous bridge between innovative ideas and economic growth.

Love Koci, European Patent Attorney

Is there anything morally wrong with “Je suis Charlie”?

In continuation of the terrible terror attack on the French satirical magazine Charlie Hebdo, social medias were flooded with the phrase “Je suis Charlie” (“I am Charlie”) as a message of condolence, outrage and defiance, as well as support for the right to free expression.

As expected, this social media wave resulted in a vast amount of speculative trademark applications being filed for the phrase around the world, as well as registrations of domain names under .fr, .com, .org, and .co.uk.

The need for applicants to exploit a tragic event is not a new trend. As recent examples, trademark applications were also filed for the Malaysian Airlines flight numbers “MH.17” and “MH.30” in continuation of the plane crashes in 2014, and the phrase “I can’t breathe” was filed as a US trademark after the highly debated death of Eric Garner caused by a police officer.

Now, it appears that OHIM has finally had enough, as on 16 January 2015, they issued a statement saying that they normally do not comment on individual cases, but that the registration of “Je suis Charlie” could be considered to be of overriding public interest. Furthermore, OHIM found that the mark could be contrary to public policy or to accepted principles of morality and thus be denied registration with reference to article 7(1)(f) of the Community Trademark Regulation. OHIM also found the mark to possibly be viewed as devoid of distinctive character.

The aim of this statement seems to be to limit the interest in speculative trademark applications aiming at capitalizing on current trends in the media picture. OHIM simply points out that such may be rejected on absolute grounds.

But even though the intention from OHIM is understandable, and speculative trademark applications should be prevented, one cannot help but wonder in what way “Je suis Charlie” is contrary to principles of morality. The mark is neither offensive nor vulgar. There is little doubt that the problem with this phrase and prior similar applications is not the marks themselves, but the identity of the applicants, who has no connection with Charlie Hebdo, Malaysian Airlines or Eric Garner. However, the relevant article 7(1)(f) relates only to the mark itself and not the name of the applicant. Consequently, the above statement from OHIM indicates an expansion of article 7(1)(f), which might be difficult to interpret going forward. Because is it only Charlie Hebdo who will be able to obtain a registration for this phrase, or will non-profit organizations against terror or for the right to free expression also be able do to so? And what happens if an original, non-offensive phrase which refers to a tragic event is filed before it becomes well-known through social media?

In my opinion, a better option for OHIM would have been to do like the French IP office did with 50 applications for the same phrase, and simply reject these applications for “Je suis Charlie” due to lack of distinctive character, and the fact that this slogan now belongs to the public. The phrase will hardly function as an indication of origin for any product or any person not in some way connected to the magazine of Charlie Hebdo.

Anders Michael Poulsen, Attorney at Law, LL.M.