Centre for Internet and Society

36th SCCR: CIS Statement on Draft Action Plan for Educational and Research Institutions and Persons with Other Disabilities

sinha — 2018-05-31T09:46:45Z

Anubha Sinha, attending the 36th Session of the World Intellectual Property Organization (“WIPO”) Standing Committee on Copyright and Related Rights (“SCCR”) at Geneva from May 28, 2018 to June 1, 2018, made this statement on the Proposed Treaty for the Protection of Broadcasting Organizations on behalf of CIS on Day 4, May 31.

Thank you, Mr. Chair.

I’m speaking on behalf of the Centre for Internet and Society, India.

We have concerns about the plan’s focus on MOOCs and distance learning initiatives. Although they are related to increasing access to education, these initiatives are hardly a substitute for classroom learning – and the primary objective of the treaty should be to improve such classroom teaching, especially for developing countries where ICT penetration remains quite low. Unless the plan also chooses to develop Open Educational Resources as a priority in connection with MOOCs and distance learning initiatives, we suggest that this item in the plan be re-examined in light of other more beneficial action items.

Thank you.

Note: Please find the Draft Action Plan here (SCCR/36/3).

For more details visit https://cis-india.org/a2k/blogs/36th-sccr-cis-statement-on-draft-action-plan-for-educational-and-research-institutions-and-persons-with-other-disabilities

Maharashtra's Copyright Policy Makes Education Unaffordable

sinha — 2018-06-26T14:22:30Z

In an alarming development for Indian students, Balbharati – the Maharashtra state bureau of textbook production and curriculum research – has issued a copyright policy that forces all publishers, digital educational-content creators, and coaching classes to obtain expensive licenses for developing material directly or indirectly relating to Balbharati’s content.

The article was published in Asia Times on June 20, 2018.

The stated object of the policy is to prevent commercialization of Balbharati’s physical and digital material.

Balbharati is responsible for setting curriculum and content for Classes 1-10, which is followed by Maharashtra state board schools. It is estimated that that around 85,000 schools in Maharashtra follow Balbharati’s prescribed content and syllabus, and the policy is set to affect students’ access to affordable supplementary material in state board schools, especially – most of which belong to the vernacular-rural section of society.

The government faced a backlash from various groups after the policy was released last week.

Parents have expressed serious concerns about the impending increase in the prices of educational material; publisher groups have already declared that the burden will be passed on to students. Some booksellers have stopped selling material altogether until the issue is resolved.

Digital and print publishers, booksellers and coaching classes are the ones directly affected, apart from the students, some of whom have lodged appeals with the state education minister, Vinod Tawde, to roll back the policy. Faced with the ire of multiple groups, the state government released a revised policy with a new license-fee structure. The new structure is based on “Balbharati Specific Turnover” slabs (defined as turnover of an entity from Balbharati related content), which depends on the nature of content produced – physical, digital, or tuition classes content.

A license is required of any person involved in the business of developing educational material such as guides, reference books, questions or tests, chapter summaries, model practice question papers, interactive digital content and software, with fees chargeable on a per subject, per medium, per grade basis.

The revisions to the policy only allow for a reduction in licensing fees, and it is likely that the government is still in ignorance of serious legal defects in it. Drafted with support from global consulting firm KPMG, the policy uses copyright as an instrument to justify the collection of license fees by making two fallacious assumptions: first, that all material produced by Balbharati is copyrightable; and second, that any dealing in Balbharati’s material, directly or indirectly, amounts to copyright infringement.

For example, the English Kumarbharati for Class 10 uses Tagore’s historic poem “Where the mind is held without fear…,” which is a work in the public domain now, and then proceeds to provide certain academic exercises for the reader.

Similarly, for science and mathematics syllabi, where basic facts and fundamental principles are provided and explained, is the Maharashtra government trying to establish copyright over such material, implying that this is creative material that has been developed by Balbharati’s staff?

Much of the content in Balbharati books deals with subjects that have been known to mankind for hundreds of years. Copyright law protects only expression of ideas, and not the ideas per se. Any supplementary material developed by another publisher over Balbharati’s syllabi should not amount to infringement, provided it is not a substantial copy-paste of Balbharati’s own expression in the books – and this is a conservative view of the scenario.

Indian copyright law

In fact, the Indian Supreme Court in the Eastern Book Company vs Modak (2008) case held that, “to establish copyright, the creativity standard applied is not that something must be novel or non-obvious, but some amount of creativity in the work to claim a copyright is required. Selection and arrangement can be viewed as typical and at best result of the labor, skill and investment of capital lacking even minimal creativity, which does not as a whole display sufficient originality so as to amount to an original work of the author.

“To claim copyright, there must be some substantive variation and not just a trivial variation, not the variation of the type where limited ways of expression available and author selects one of them.”

Thus the policy fails to appreciate fundamental developments in Indian law and places a barrier to creation of all kinds of educational material – without distinguishing between various kinds of supplementary material and showing precisely as to what nature and quantum of use as per Balbharati would qualify as infringing.

Interestingly, the previous version of the policy contained an FAQ (frequently asked questions) section that elaborated principles of copyright law. However, this section has been removed in the latest version. In any case, the FAQs presented incomplete explanations of Indian copyright jurisprudence, making references to outdated case law.

As noted earlier, publishers and digital content development companies are already suffering from the ramifications. In places where the quality of classroom teaching and learning is sub-par, it is unacceptable to deprive students access to affordable guides, reference books, digital content, and so on by unreasonably deeming indirect usage of Balbharati’s content as infringing activity.

Given India’s socio-economic conditions, it would be fatal to implement policies that seek to create a self-serving market of educational licenses for the state, very much at the expense of ensuring quality and affordable education. At the very least, the Maharashtra government should have conducted a proper public-consultation exercise before arriving at such a policy that stands to affect students and other stakeholders in the education system adversely.

For more details visit https://cis-india.org/a2k/blogs/asia-times-june-20-anubha-sinha-maharastras-copyright-policy-makes-education-unaffordable

CIS Submission on Patents Act

sinha — 2018-04-10T15:48:09Z

For more details visit https://cis-india.org/a2k/files/cis-submission-on-patents-act

CIS' Submission on Statement of Working of Patents

sinha — 2018-04-21T15:32:00Z

The Centre for Internet & Society (CIS) made a submission to the Indian Patent Office on the issue of Statement of Working as per Form 27 under the Patents Act, 1970.

Select stakeholders were invited to the consultation meeting held on April 6, 2018. Anubha Sinha attended it along with a few other public-spirited stakeholders. She made a statement stressing on the requirement of the patent system to serve the welfare-purpose and not create mere non-working/ blocking monopolies; and that the argument of representatives of patentees about non-working of patents being the existing norm, and that they cannot be questioned about this, is absolutely against the central tenets of patent law. All written submissions can be accessed here.

Centre for Internet and Society - India’s (CIS) submission to the Controller General of Patents, Designs and Trademarks (CGPDTM) pertaining to Stakeholders Meeting regarding issues related to Working of patents under the Patents Act, 1970

As the CGPDTM is aware, the Indian mobile device manufacturing industry is mired in issues related to licensing of standard essential patents (SEPs). Disputes have resulted in imposition of heavy interim royalty rates on Indian manufacturers, payable to foreign SEP holders. Section 146 and Rule 131 of the Patents Act, 1970 mandate patentees to provide information on working of patents, which is crucial for willing licensees to access patent working information in a timely manner. This requirement, that the details of patent working be disclosed by patentees supports several policy goals, firstly, of making the Indian population benefit from commercial use of the invention; secondly, prevents patentees from creating blocking monopolies – from obtaining and maintaining patents for the purpose of blocking others from developing technologies in the vicinity of the patented inventions; and thirdly, by showing that reasonable requirements of the public are met (or not), directly impacts the implementation of the compulsory licensing scheme of the Patents Act, 1970.
We note that in 2009, 2013 and 2015 the CGPDTM issued public notices calling on patent owners to comply with their obligations to file statements of working on Form 27. Further, on February 12, 2013, the Indian Patent Office (IPO) announced plans to make Form 27 submissions for the year 2012 available to the public via the IPO website. However, these measures have not yielded any significant progress, as patentees and licensees continue to not comply or defectively comply with the statutory requirements.
CIS’ empirical research on ICT innovations reveals that there are serious lapses as far as compliance and enforcement of statutory provisions mandating filing of Form 27 are concerned. In the past year, we studied data available from 2009- 2016 for the mobile device sector, and could only identify and access 4,916 valid Forms 27, corresponding to 3,126 mobile device patents, leaving 1,186 Indian patents for which a Form 27 could have been filed, but was not found. For a surprising number of Form 27s (3%) the working status of the relevant patent was not even designated.

Even among the Form 27s that had been obtained, almost none contained useful information regarding the working of the subject patents or fully complying with the informational requirements of the Indian Patent Rules. Many patentees simply omitted required descriptive information from their forms without any explanation.

Via our research we also gathered complaints raised by patentees and industry observers regarding the structure of the Form 27 requirement itself. For example, patents covering complex, multi-component products that embody dozens of technical standards and thousands of patents may not necessarily be amenable to the individual-level data requested by Form 27.

Thus, our findings support the arguments and findings made by the petitioners in the ongoing matter of Shamnad Basheer v. Union of India and Ors.
Regardless, we submit that these technical difficulties should not hinder the critical statutory requirement placed on patent holders to diligently comply with Form 27 compliance. In the context of licensing of SEPs, several stakeholders recently suggested solutions as revealed from the submissions made to the TRAI Consultation on Promoting Local Telecom Manufacturing:

Two industry associations, namely Telecom Equipment Manufacturers Association of India (TEMA) and Telecom Equipment & Services Export Promotion Council (TEPC) and a telecommunication enabler Vihan Network Limited recommended that a modified and longer version of Form 27 (Form 27S) may be designed for SEP holders that should apply right at the filing stage. Section 159 of the Patent Act, 1970 empowers the central government to make such modifications to the form, as necessary.

Further, Prof. T Ramakrishna (MHRD Chair on Intellectual Property Rights) at NLSIU, specifically recommended that Form 27 may be amended to include a new column, which may require the patent holder to declare if their patent forms a part of any standard and in case of affirmative answer – the name of the Standard Setting Organisation and corresponding standard of which it is a part.

We recommend that the form may be amended to make it more comprehensive and suitable for obtaining necessary information. The same information should be made publicly accessible, in order to satisfy the Indian citizen that the patent is being properly worked.
Further, we would like to draw attention to our findings on deficient technical capabilities of the Indian Patent Office’s online Form 27 repository:
Some PDFs of the forms comprise scanned image files without OCR of the text. This makes them inaccessible to the visually impaired, and prevents search and discoverability of their content. This also makes them less usable by preventing copying and selection of text.

In some cases, it was difficult to identify which one in the list of documents associated with a patent is Form 27, because of obscure filenames.

For example, for Patent Number 262228, Form 27 was named 68.262228.pdf, as found on IPAIRS.

For Patent number 260603, the filename for Form 27 was "ipindiaonline.gov.in_epatentfiling_online_frmPreview.asp.pdf" on IPAIRS.

Inconsistency in search results found on IPAIRS. Searching for the peripheral documents of the patents, returned the results, "No PDF found" for one full week. The next week, the documents started showing. Some searches returned results for an entirely different patent number.

Sometimes, Form 27 found on InPASS was not found on IPAIRS and vice versa.

Runtime errors occur due to browser caching. IPAIRS returned either a 404 error or Connection Time Out ("site is taking too long to respond") http://ipindiaonline.gov.in/patentsearch/search/index.aspx. In our opinion, it could be redirected to InPASS as it uses the same search engine as InPASS. Further, http://ipindia.nic.in/patsea.htm returned a 404 error.
We are thankful to the Indian Patent Office for the opportunity to make these submissions. It would be our pleasure and privilege to discuss these submissions and recommendations in details at the Stakeholders’ Meeting on 21 March, 2018.

On behalf of the Centre for Internet and Society, March 16, 2018
Anubha Sinha, anubha@cis-india.org

See Trimble, Markela, Patent Working Requirements: Historical and Comparative Perspectives (2016). Available at http://www.law.uci.edu/lawreview/vol6/no3/Trimble.pdf

See Contreras, Jorge L. and Lakshané, Rohini and Lewis, Paxton, Patent Working Requirements and Complex Products (October 1, 2017). NYU Journal of Intellectual Property & Entertainment Law; Available at SSRN: https://ssrn.com/abstract=3004283

Supra note (ii).

Refer to Appendix for a breakdown of compliance of Form 27 by patent holders in the mobile device sector.

See Shamnad Basheer, Making Patents Work: Of IP Duties and Deficient Disclosures, 7 QUEEN MARY J. INTELL. PROP. 3, 6-17 (2017).

Also, see https://spicyip.com/shamnad-basheer-v-union-of-india-ors

See TRAI’s Consultation Paper on Promoting Local Telecom Equipment Manufacturing dated 18.09.2017 and the responses, available here: http://trai.gov.in/consultation-paper-promoting-local-telecom-equipment-manufacturing?page=2

Section 159 of the Patent Act, 1970 empowers the central government to make rules. Accordingly, the Rule 131 of the Patents Rules, 2003 prescribes Form 27 as the manner in which section 146(2) of the Act is to be implemented.

An email by Rohini Lakshane (CIS) compiling these issues was sent to Dr. K.S. Kardam (Senior Joint Controller of Patents and Designs - ‎Indian Patent Office) on 09.09.2017.

Click to download the submission by CIS made on March 16, 2018 here.

For more details visit https://cis-india.org/a2k/blogs/cis-submission-on-statement-of-working-of-patents

2015 USTR Report: Old Wine in New Bottle

sinha — 2015-06-16T10:24:49Z

Every year, the Office of the United States Trade Representative (USTR) undertakes an elaborate exercise to castigate countries' domestic intellectual property (IP) law and policy. The criticisms and recommendations are presented in a document called the Special 301 Report. This year's edition puts India on the Priority Watch List for the twenty-sixth time in a row. Below, I rebut the report's prejudicial claims and demands, and argue that the report puts free speech, innovation and public interest in jeopardy.

Keeping in tradition , the 2015 report yet again exposes US' hypocrisy by faithfully serving Hollywood and Big Pharma. In the past, countries such as Israel and Canada have publicly rejected the USTR's findings and derided the US for unwarranted interference with domestic law and policy. Last year, India too had refused to cooperate with a USTR initiated unilateral investigation (Out of Cycle review) of its IP regime because the investigation violated international law.

The Electronic Frontier Foundation has released a hard-hitting response to the report. It draws case studies of countries where overbroad IP law has affected public interest, free speech and innovation. For instance, it mentions how Colombia's 'reformed' copyright law has become a travesty. Colombia introduced extreme enforcement and harsh criminal sanctions for unauthorised sharing of works at the behest of the US. Last year, news surfaced that a Colombian biodiversity researcher faced upto eight years in prison for sharing an academic article on Scribd. Any balanced IP regime (including India) permits such use of copyrighted works under the fair use principle, however, Colombia's narrow fair use provision has led to a situation where citizens now face prison for ordinary use of academic works.

This year the Special 301 Report in its section on India approves the Prime Minister's statements to align IP law with international standards, which is a cause for concern. Firstly, what are these “international standards” that both US and India refer to exactly? The most comprehensive international agreement on IP that binds 160 member nations is the WTO Agreement on Trade related aspects of Intellectual Property (TRIPS Agreement). Ergo, this agreement would qualify as the most accepted “international standard”, which India already complies with. Secondly, the TRIPS Agreement sets down certain global minimum standards for protecting and enforcing IP, simultaneously providing countries a certain degree of flexibility. However, the US has consistently pushed India to enact tougher provisions known as TRIPS Plus provisions. This is reflected in the report as well. Legally speaking, under international law India is not obligated to accede to such demands, and it should not if it wants a balanced IP regime to protect and serve the interests both of rights holders and its citizens.

The report shamelessly aligns its concerns with the financial interests of foreign rights holders and American companies. It erroneously projects IP as a tool to only maximise revenues, agnostic to public interest. While IP rights are temporary monopolies, they also are a tool to ensure innovation, social, scientific and cultural progress and further access to knowledge. It is well established that flexible IP laws enable access to knowledge and promote innovation. Such a flexible regime is critical to developing countries like India. The USTR conveniently forgets that lax IP law and enforcement for a large part of the 19th century helped the US to accelerate into an economic powerhouse and a front-runner in innovation. It also brazenly threatens to impose unilateral sanctions against a country designated as a Priority Foreign Country on the list. This treatment is usually reserved for the worst offender on the list. Such unilateral threats and sanctions are again a direct violation of international law.

Unsurprisingly, the report is critical of India's under-enforcement of copyright laws and the impact of patent law on pharmaceuticals. It demands a specific legislation to counter camcording and video piracy. The prospective legislation is unnecessary because all movie theatres in India prohibit camcorders and the prevailing Copyright Act, 1957 contains penalties to punish offenders. Instead of creating new offences, we should re-evaluate the need of existing offences. For instance, copyright infringement on non-commercial scales should not be a criminal offence at all . Instead, the law should provide convenient and affordable access to such works to counter petty infringement.

India is home to the world's largest apothecary. The Indian pharmaceutical and medical device industry provides affordable healthcare to the citizens, and also exports drugs to countries in need. In fact, the compulsory licensing mechanism has ensured affordable access to life saving liver and kidney drugs in India. The report comments on the undesirability of section 3(d) and the compulsory licensing mechanism in Indian patent law. With respect to section 3(d), the US wishes India to to change its patent law to enable large pharma companies to patent new forms of known substances that aren't even better. This alarmist outlook smacks of hypocrisy because the US, in fact, has a higher rate of patent invalidation and compulsory license grants! It also demands data exclusivity – which would extend proprietary rights to patentees over government mandated drug data, and would be detrimental to the local pharma industry. Further, the report states that the Indian system is biased against enforcement of foreign patent rights holders - which is mere speculation. There is no evidence to draw such a conclusion. The claims relating to localisation trends in pharma are half- baked and speculative again.

The report observes that at the UNFCCC negotiations, India recognised patents as an obstacle to dissemination of climate change technologies. It wishes India understood the critical role of patent protection and competitiveness to ensure innovation, which is a flawed co-relation. While strong IP rights may protect inventors against infringement and provide return on investment, however, stronger IP rights also raise the cost of innovation by raising the price of technological inputs into innovation and lower the frequency of innovation.

As far as the issue of counterfeit medicines is concerned, a better remedy lies in health safety laws and consumer laws, than the trademark law. The report also approves of state legislatures' version of the Goondas Act. These Acts provide for detainment of criminals and lumpen elements in society, and with recent amendments have expanded to include video pirates and digital offenders. Karnataka's Goonda Act enabling preventive detention violates constitutional rights. While the Sixth Amendment to the United States Bill of rights protects offenders against preventive detention, the US has no qualms about approving such unconstitutional procedures in India.

The arguments above underscore the irrelevance of the report. The Prime Minister may have made appeasing statements to the USA, however, in a welcome development Commerce and Industry Minister Nirmala Sithraman in response to the report stated “India is fully aligned with international intellectual property rights standards and "there is no need for anyone to question us."” Our IP regime with its inherent flexibilities should be preserved and not sacrificed at the altar of US' business interests. Using compulsory licensing across sectors would indeed accelerate technology transfer and diminish initial capex for manufacturers, a move promoted by the National Manufacturing Policy. The ambitious Make in India and Digital India campaigns are set to suffer if India incorporates TRIPS plus standards into its IP regime. The government supports opennes s and has implemented policies mandating use of open standards and open source software as a part of the Digital India campaign. India should not let foreign hands dictate its IPR Policy, and proceed to develop a policy which is informed by broader principles of fairness and equity, balancing intellectual property protections with limitations and exceptions/user rights such as those for research, education and access to medicines.

For more details visit https://cis-india.org/a2k/blogs/2015-ustr-report-old-wine-in-new-bottle

Call for Participation: Global Congress on Intellectual Property and the Public Interest

sinha — 2015-06-24T16:11:07Z

We are pleased to announce the call for participation for the fourth edition of the Global Congress on Intellectual Property and the Public Interest (“Global Congress”), being hosted at New Delhi from December 15 to 17, 2015.

The theme for this year’s Congress will be “Three Decades of Openness; Two Decades of TRIPS.” We are now inviting applications to participate in the Congress, including session participation and presentations. We are also welcoming proposals for panels and workshops.

The application form is available now at [http://form.jotformpro.com/form/50854976184973?] Please note that this form is for application purposes, and does not amount to confirmation of participation. The registrations for the plenary sessions, which are open to the public, will open closer to the date of the Global Congress.

Deadlines

August 1st: Priority Deadline for Applications- Applicants will be considered on a rolling basis, with applications made by August 1st being given first consideration. Applications after August 1st to receive travel assistance will be considered only under exceptional circumstances (these details will be collected in a subsequent form).

November 1st: All applications for session participation and paper submissions will close on November 1st.

Application Information

For applications to participate/host: Applications to present or host workshops shall be considered based on the proposals to be submitted in the form.

For applications to attend sessions: Applications to attend sessions as discussants will be considered based on the statement of purpose and/or any other relevant information provided by the applicant.

Limited travel grants to cover accommodation and/or travel to the Congress will be available, with priority to those from developing countries.

Background, Theme and Expected Outcomes

The Global Congress on Intellectual Property and the Public Interest is the most significant event on the calendar for scholars and policy advocates working on intellectual property from a public interest perspective. By sharing their research and strategies, the network of experts and activists supported by the Global Congress are empowered to put forward a positive agenda for policy reform. The Global Congress began in Washington D.C. in 2011, moved to Rio de Janeiro in 2012, and was held in Cape Town in 2013. The fourth Global Congress will now be held in New Delhi, in December 2015. The event would be the largest convening of public interest-oriented intellectual property practitioners ever held in Asia, and would help link in the world's most populous region to these global debates around how intellectual property policy can best serve the public interest.

The fourth edition of the Global Congress brings research, civil society, industry and regulatory and policy-making communities together for active, intense engagement on key public-interest intellectual property issues. Opportunities for these groups to interact are rare but valuable; and have been proven to lead to successful policy outcomes. The 4^th edition of the Congress, slated to be held in December, 2015 in New Delhi seeks to be one such opportunity.

The theme for the 2015 Congress is Three Decades of Openness; Two Decades of TRIPS-coming at a pivotal time for reflection, revision, and further strategizing. Specifically, the 2015 Congress seeks to produce three outcomes- first, the mobilization of existing scholarly research directly into the hands of civil society advocates, business leaders and policy makers, leading to evidence-based policies and practices; second, the collaborative identification of urgent, global and local research priorities and generation of a joint research/advocacy agenda; and third, the solidification of an inter-disciplinary, cross-sector and global networked community of experts focused on public interest aspects of IP policy and practice.

Participation Opportunities

Discussions at the Global Congress will be carried out in the form of plenary sessions, thematic tracks, cross-track sessions, and the room of scholars. Participation is invited for the thematic track sessions, cross-track sessions and the room of scholars.

The thematic tracks at the Global Congress are: 1) Openness, 2) Access to Medicines, 3) User Rights, 4) IP and Development. Cross-track sessions will feature research that cuts across tracks in order to facilitate engagement between tracks on themes of mutual interest.

The Room of Scholars will feature presentations of research outputs such as draft works or white papers that may not fit directly within the thematic tracks but fall within the overall theme of the Global Congress.

Participation could be in the form of presenting / discussing conference papers or policy briefs, or by conducting workshops where they may share their own work and solicit feedback from peers, during the aforementioned sessions.

The application form for participation is available now at http://form.jotformpro.com/form/50854976184973?. Please forward this invitation to interested lists and individuals. For more information or questions, you may contact global-congress@cis-india.org.

Organisation

The 4^th Global Congress on Intellectual Property and Public Interest, is being organised in cooperation with National Law University, Delhi, by the American Assembly at Columbia University, the Centre for Internet and Society, Open A.I.R., and the Program on Information Justice and Intellectual Property at American University Washington College of Law.

For more details visit https://cis-india.org/a2k/blogs/call-for-participation-global-congress-on-intellectual-property-and-the-public-interest

34th SCCR: CIS Statement on the Discussion on Limitations and Exceptions for Libraries and Archives

sinha — 2017-05-15T10:35:36Z

Anubha Sinha, attending the 34th Session of the World Intellectual Property Organization (“WIPO”) Standing Committee on Copyright and Related Rights (“SCCR”) at Geneva from 1 May, 2017 to 5 May, 2017, made this statement during the discussion on limitations and exceptions for libraries and archives.

Thank you, Mr. Chair.

CIS works on issues of access to knowledge and other digital rights in India.

I would like to share with you my experience which highlights the difficulty of building digital archives in India. Mr. Chair, earlier last year the government of India embarked upon the important project of digitizing the cultural audiovisual material stored in government and private collections to store material for preservation purposes, and set up a virtual network of these repositories to offer online access. My organization has been assisting them in this crucial public service mission. These works are oral traditions, dance, music, theatrical practices, cultural practices – all of which lie largely inaccessible and languishing in several small and large collections in India. Since, the Indian copyright Act does not contain an exception for the purposes of preservation by an archive; the entire project has suffered high costs in terms of money and time. Money, because the project had to get expensive legal assistance to set up processes to obtain rights clearance from all the performers who were a part of the works and copyright holders- some of which are orphan works, thereby compounding the problem. Further, partnering organizations also expressed legitimate fears of supplying their works, in case of a potential copyright and related rights violation that could implicate them with civil/criminal liability.

In such a scenario, for the benefit of other states to update their standards corresponding to this international legal instrument as well, it would indeed be useful to adopt the proposals mentioned in the document SCCR/26/3 that address these issues, and others.

Thank you.

For more details visit https://cis-india.org/a2k/blogs/34th-sccr-cis-statement-on-the-discussion-on-limitations-and-exceptions-for-libraries-and-archives

Second Draft of Open Access Policy of the Department of Biotechnology and Department of Science released

sinha — 2014-10-30T00:33:49Z

The Department of Biotechnology and the Department of Science, Ministry of Science and Technology, Government of India drafted an Open Access Policy (“Policy”) in consultation with several open access experts, government officials and CIS. The second draft of the Policy released last week and is open for comments till 17th November, 2014.

The Centre for Internet and Society (“CIS”) commends the efforts of the Ministry of Science and Technology, Government of India to make scientific research publicly available by developing an open access policy. The first and second drafts of the Policy may be accessed here. The following part highlights the changes inserted in the second draft of the Policy.

Second draft of the Department of Biotechnology and the Department of Science Open Access Policy

The second draft has been titled “Policy on open access to DBT and DST funded research.” At the outset, the second draft reflects that the Policy is voluntary and not mandatory in nature. To reiterate this, the Department of Biotechnology and the Department of Science (“DBT-DST”) acknowledge and respect right of researchers to publish their work in a journal of their choice in the Policy. However, the DBT-DST maintains that it will not underwrite article processing charges. In addition, the Policy respects the limitations placed on research outputs under Indian law and intellectual property policies of the respective institutions.

The Policy lays out that the process for making a research output openly accessible will start at the institutional level, and it has been made mandatory for institutions which receive core funding from DBT-DST to set-up an Institutional Repository(“IR”). The DBT-DST will provide adequate assistance to set up institutional repositories. For other institutions, it is strongly suggested that they set up an IR. Meanwhile, institutions can submit their work in the central repository created by the DBT and DST (dbt.sciencecentral.in and dst.sciencecentral.in). The Ministry of Science and Technology will set up a central harvester (www.sciencecentral.in) that will harvest the full text and metadata of these publication.

The recommended deposit period of the works has been extended to two weeks after the acceptance by the journal, and the recommended embargo period is less than a year. Depositing in a suitable repository has been made mandatory for all research outputs. CIS strongly recommended an embargo period of one year, and making deposits in repositories mandatory, regardless of the open access routes ( Gold OA or Green OA) adopted by the scientist.

The draft makes it clear that the Policy does not intend to override the agreements between the researchers and publishers, however, it recommends the authors to bring to the notice of publishers their obligations under the Policy.

In furtherance of creating awareness of open access, the DBT-DST intend to celebrate “Open Access Day” during the International Open Access Week (http://www.openaccessweek.org/) by organizing sensitizing lectures, programmes, workshops and taking new OA initiatives.

The second draft successfully addresses concerns raised by scientists and publishers on the first draft. The comments on the first draft may be accessed here. In the comments, the scientific community requested clarification on the mandatory nature of the policy. It also raised the issue of impeding career advancement in view of limited number of open access journals and the dependence on publications in certain noteworthy journals while hiring. Therefore, the second draft of the Policy makes it voluntary to publish open access, however, depositing in repositories has been made mandatory.

Further, concerns about IRs and central repository have been addressed in the second draft with the DBT-DST committing to assist institutions in setting up IRs.

Some publishers raised concerns about the stipulated embargo period, and suggested it be extended to a variable of 12-24 months, instead of the 12 months period recommended in the Policy. However, the second draft retains the embargo period of one year because scientific research moves at a fast pace, and locking crucial research for more than one year runs the risk of rendering the research outdated.

FAQs on the Policy will be released soon, as requested by several commentators.

About the Policy

CIS has been assisting the DBT-DST on developing the Policy since June 2014. The Policy document was drafted by the Open Access Policy Committee. I blogged about the exercise undertaken to emerge with the first draft which was followed by a round of comments from the public. After releasing the first draft, the Open Access Policy Committee convened a meeting to review the Policy in light of the feedback received. CIS was invited to participate in the meeting and I attended it in furtherance of the submissions made by CIS previously. The second draft is the outcome of the Open Access Policy Committee meeting.

For more details visit https://cis-india.org/openness/second-draft-of-open-access-policy-of-the-department-of-biotechnology-and-department-of-science-released

Methodology: Intellectual Property in Mobile Application Development in India

sinha — 2015-08-10T15:20:09Z

A steady rise in smart phone penetration in India has led to a corresponding growth of the mobile application development industry. Mobile application development like all technological implementations is subject to intellectual property issues. However, very little is understood about the effect of existing patent and copyright law on this niche industry. I aim to develop an understanding of the mobile applications industry, and how it is governed by current Indian patent and copyright regime. I will also use this research to inform the optimal ways in which policymakers may ensure the continual emergence of the mobile applications industry. This blog post lays down a document delineating the research methodology and research questions within the Intellectual Property in Mobile Application Development in India chapter under the Pervasive Technologies Project. The document is a work in progress.

Introduction to the “Intellectual Property in Mobile Application Development in India” chapter

Software companies in India were traditionally operating on the software as a service (SAAS model). Service contracts signed within this industry ensured that all IPR developed during a project was owned by the client. With the advent of the smart-phone, many software developers left SAAS enterprises in pursuit of developing their own mobile application products (“mobile apps”). Several developers began to aggressively acquire or create patent portfolios around their products.[1] However, it has been observed that mobile apps continue to be increasingly produced in imitation of other products or services or by more discrete means of copying source code or content without the right to do so.

The overall objective of this chapter is to develop a holistic picture of the mobile apps development ecosystem in India in order to portray the decisions developers are making within their practice as a function of how India's intellectual property regime operates within this ecosystem. I will also examine whether existing regimes of intellectual property interact inhibit or accelerate the growth of the mobile applications development ecosystem in India, especially in conjunction with market and cultural forces arising as a result.

Research Questions and Methodology

1. What are the decisions developers are making within their practice in terms of location of their enterprise and clients, scale of audience, funding, business models and mobile apps marketplace (app stores) ?

1.1. Who is the primary actor in the mobile applications development cycle in India?

Method:

1. Analysis of the quantitative research conducted by Samantha Cassar across 267 mobile applications developers.[2]

2. Create a new interview instrument and supplement with relevant external expert interviews obtained from Samantha Cassar's qualitative research.

◦ The interviews shall be conducted with respondents based out of Mumbai, Pune and Hyderabad

◦ The exercise targets 10 developers in each city

The analysis of the interviews and results of Samantha's web survey shall be verified by an expert well-versed with the analysis of qualitative and quantitative data

1.2 Is the mobile apps marketplace organically developing into a Bazaar model, or a Cathedral model?

Method: Literature review

1.3. What are the contractual terms between the enterprise and the employee? What is the typical nature of agreements in the mobile apps development industry between enterprise-employee and enterprise- client?

Method: Analysis of the quantitative research conducted by Samantha Cassar and supplement with relevent external expert interviews obtained from her qualitative research.

2. What is the nature of innovation emerging from the mobile app industry? What is the awareness of the mobile applications developer and its enterprise of rules concerning code, content and design? How does re-use and sharing of code, content and design occur in the mobile application developer ecosystem ? What is the perceived impact of the Indian IPR regime on the aforementioned aspects? Finally, do the emerging trends in re-use and sharing of code run afoul of Indian IP law?

Method: Analysis of Indian Patent and Copyright regime to assess the legality of prevailing practices in the ecosystem.

Analysis of the quantitative research conducted by Samantha Cassar and supplement it with relevant external expert interviews obtained from Samantha's qualitative research.

3. The apps marketplace is extremely important since they are the gatekeepers enabling access to apps. What is the nature of the apps marketplace? What are the limitations associated with it ? How do the existing regulatory models intersect with this relatively new marketplace? What is the enforcement carried out by these app stores in terms of IP?

Method: Literature review and analysis of the new survey instrument.

4. How does Indian Copyright law and patent law apply to the mobile applications development ecosystem, in respect of the various business models operating in the industry?

Method: Literature review

4.1. The patent regime is grounded on a laboratory model of innovation. What does the niche mobile applications development industry (working on a micro-creativity model of innovation) require differently from the patent regime to foster growth?

Method: Literature review

4.2. Similarly, copyright law has a distinct design for digital objects. Examine the design and its suitability to regulate a mobile application.

Method: Literature review to trace the development of copyright law. Copyright was designed to regulate a physical book publishing industry. By extending its application to myriad objects, the design has gone through significant changes. Also, conduct expert interviews in the field to understand the practice and gather qualitative data.

[1]See Lava aims for 100 mobile apps, available at http://spicyip.com/2013/01/guest-post-lava-aims-for-100-mobile-app.html

[2]Out of 267 respondents, 93 responded in full and 164 responded partially

For more details visit https://cis-india.org/a2k/blogs/methodology-intellectual-property-in-mobile-application-development-in-india

35th SCCR: CIS Statement on Limitations and Exceptions for Libraries and Archives

sinha — 2017-11-15T13:35:02Z

Anubha Sinha, attending the 35th Session of the World Intellectual Property Organization (“WIPO”) Standing Committee on Copyright and Related Rights (“SCCR”) at Geneva from 13 November, 2017 to 18 November, 2017, made this statement on the agenda for Limitations and Exceptions for Libraries and Archives on behalf of CIS on Day 3, 15 November, 2017.

The Centre for Internet and Society, in agreement among others, believes that an international binding instrument to govern exceptions and limitations for libraries and archives is critical.

In several countries, their set of limitations and exceptions do not serve all intended beneficiaries in a comparably equal manner. For example, for the work of archives in India, there is very little that allows such institutions to do in terms of making copies for preservation and noncommercial dissemination. India, like many other countries here has a rich cultural heritage – and doing any activities with old audiovisual material involves identifying rightholders and clearing rights connected to orphan works and traditional cultural expressions as well. Imagine the onerous task of an archive of clearing all these rights in connection with appropriate agencies, and of course clearing additional permissions from authors and performers. In our research, we discovered that most archives in India miserably fail on this front, causing valuable material being locked in storage rooms for decades.

Needless to say, accessibility to this national wealth of knowledge in archives also supports the mission of libraries, museums and educational institutions and researchers.

So Mr. Chair, we strongly believe that an update to the international copyright system via a binding instrument would serve many countries well. It would empower all countries to fill in such deficiencies in relation to libraries, archives, educational and research institutions, museums and persons with disabilities.

Thank you, Mr. Chair.

For more details visit https://cis-india.org/a2k/blogs/35th-sccr-cis-statement-on-limitations-and-exceptions-for-libraries-and-archives

35th SCCR: CIS Statement on GRULAC Proposal for Analysis of Copyright in the Digital Environment

sinha — 2017-11-17T10:03:21Z

Anubha Sinha, attending the 35th Session of the World Intellectual Property Organization (“WIPO”) Standing Committee on Copyright and Related Rights (“SCCR”) at Geneva from 13 November, 2017 to 18 November, 2017, made this statement on the agenda 'Other Matters' on behalf of CIS on Day 5, 17 November, 2017.

We would like to reiterate the importance of GRULAC Proposal for Analysis of Copyright in the Digital Environment.

The Centre for Internet and Society is a non-profit organisation in India that undertakes research on internet and digital technologies from an academic and policy perspective.

In an environment of monopolies controlling the distribution of digital goods and services, which connect users and creators, such a comprehensive study assumes significant importance, especially for creators in the global south.

We are especially concerned with the methods by which platform intermediaries are enforcing their private IP rules on creators worldwide, and if there are fair systems in place to address takedown, and the subsequent restoration of works unfairly taken down from their platforms. It must be noted that there is a serious lack of transparency as far as the conduct of such intermediaries go, and often actions are taken without appropriate justification/explanation.

It is equally important that we continue to build on limitations and exceptions for libraries, museums, archives, educational institutions, researchers, and users’ in the digital environment.

Thank you.

For more details visit https://cis-india.org/a2k/blogs/35th-sccr-cis-statement-on-grulac-proposal-for-analysis-of-copyright-in-the-digital-environment

CIS Comments on TRAI Consultation Paper on Promoting Local Telecom Equipment Manufacturing

sinha — 2017-11-26T02:56:15Z

The Centre for Internet & Society (CIS) sent comments to the TRAI Consultation Paper on promoting telecom equipment manufacturing. CIS submission drew primarily from the research done in the Pervasive Technologies project.

Read TRAI's Consultation Paper on Promoting Local Telecom Equipment Manufacturing

Preliminary

This submission presents comments by the Centre for Internet and Society, India ("CIS") on the Consultation Paper on Promoting Local Telecom Equipment Manufacturing dated 18.09. 2017, released by the Telecom Regulatory Authority of India (TRAI), under Department of Telecom, Ministry of Communications and Information Technologies (“the TRAI Consultation Paper”).
We commend TRAI for its efforts at seeking inputs from various stakeholders on this important and timely issue and are thankful for the opportunity to put forth our views.
We have addressed questions 3 and 5 of the TRAI Consultation Paper. Question numbers referred to in our submission correspond to those in the TRAI Consultation Paper.
Further, the Department of Industrial Planning and Promotion (DIPP) invited comments on SEPs and their availability on FRAND terms on 01. 03. 2016.[1] CIS submitted a detailed response to the consultation, and our present submission will draw significantly from our earlier response[2], as well as new empirical research concluded in the since the time of the consultation.

About CIS

CIS[3] is a non-profit organisation that undertakes interdisciplinary research on internet and digital technologies from policy and academic perspectives. Our areas of focus include IP rights, openness, internet governance, telecommunication reform, free speech, intermediary liability, digital privacy, cyber-security, and accessibility for persons with diverse abilities.
We strive to maximise public benefit, useful innovation, vibrant competition and consumer welfare. This submission is consistent with our commitment to the domestic goals (as enumerated in Make in India and Digital India), and the protection of India's national interest at the international level.

Submission on the Issues for Resolution

“Q.3 Are the existing patent laws in India sufficient to address the issues of local manufacturers? If No, then suggest the measures to be adopted and amendments that need to be incorporated for supporting the local telecom manufacturing industry.”

We submit that amendments to the Patents Act, 1970 may not be preferred, presently. It may be noted that there have been no judgments concluded by Indian courts on disputes relating to licensing of SEPs, yet. Justice Bakhru’s landmark order in Telefonaktiebolaget LM Ericsson (Publ) v. Competition Commission of India (2016) provided valuable clarity on the issue of conflict between remedies under Patents Act, 1970 and Competition Act, 1970. As various other matters are yet to be conclusively decided, and given the complex legal questions involved around the interpretation of Patents Act, 1970 and Competition Act, 2002, and constitutional issues around the jurisdiction of regulators and the power of judicial review of the courts, we believe that it would be prudent to examine the ruling of the courts on these issues in some detail, before considering amendments.

However, to support the local telecom manufacturing industry the Government of India may adopt and implement the following measures:

Develop Model Guidelines to improve the working of Indian Standard Setting Organisations (SSOs): Given the increasing complexity and time-consuming nature of SEP litigation in India, there is a tangible threat of the abuse of the FRAND process, it might be useful for the government to make suggestions on the working of Indian SSOs. The functioning of Indian SSOs has not been satisfactory and it is suggested that the government develop Model Guidelines that may be adopted by Indian SSOs, taking into account India specific requirements. The India specific requirements include a large and exponentially growing mobile device market which has made it possible for manufacturers, patent owners and implementers alike to achieve financial gains even with a low margin. We believe that this measure will also enable the fulfillment of the objectives of the Make in India and Digital India initiatives.

We recommend that various stakeholders, including IP holders, potential licensees and users of IP, civil society organizations, academics, and, government bodies, including the Indian Patent Office, the Department of Telecommunications, the DIPP, TRAI, and, the CCI be consulted in the creation of these Model Guidelines.

In our opinion, the Model Guidelines may cover (a) the composition of the SSO; (b) the process of admitting members; (c) the process of the determination of a standard or technical specification; (d) the process of declassification of a standard or technical specification; (e) the IPR Policy; (f) resolution of disputes; (g) applicable law.
Initiate the formation of a patent pool of critical mobile technologies and cap royalty payments: In light of the observed inadequacies in the IPR policies of various SSOs in India, as well the spate of ongoing patent infringement lawsuits around mobile technologies, we recommend that the government intervene in the setting of royalties and FRAND terms by setting up a patent pool of critical mobile technologies and apply a compulsory license with a five per cent royalty. Further, patent pools should be required to offer FRAND licenses on the same terms to both members and nonmembers of the pool.

Our motivations for this proposal are manifold. In our opinion, it is nearly impossible for potential licensees to avoid inadvertent patent infringement. As a part of our research on technical standards applicable to mobile phones sold in India, we have found nearly 322 standards so far.[4] It is submitted that carrying out patent searches for all the standards would be extremely expensive for potential licensees. Further, even if such searches were to be carried out, different patent owners, SSOs and potential licensees disagree on valuation, essentiality, enforceability, validity, and coverage of patents. In addition, some patent owners are non-practising entities and may not be members of SSOs. The patents held by them are not likely to be disclosed. More importantly, homegrown manufacturers that have no patents to leverage and may be new entrants in the market would be especially disadvantaged by such a scenario. Budget phone manufacturers, standing to incur losses either as a result of heavy licensing fees, or, potential litigation, may close down. Alternatively, they may pass on their losses to consumers, driving the now affordable phones out of their financial reach. With the objectives of Make in India and Digital India in sight, it is essential that Indian consumers continue to have access to devices within their purchasing power.

Further, how did we arrive at a cap of 5 percent? The rationale for this figure is the royalty cap imposed by India in the early 1990s. As part of regulating foreign technology agreements, the (former) Department of Industrial Development (later merged with DIPP) capped royalty rates in the early 1990s. Payment of royalties was capped at either a lump sum payment of $2 million, or, 5 percent on the royalty rates charged for domestic sale, and, 8 percent for export of goods pertaining to “high priority industries”.[5] Royalties higher than 5 percent or 8 percent, as the case may be, required securing approval from the government. While the early 1990s (specifically, 1991) was too early for the mobile device manufacturing industry to be listed among high priority industries, the public announcement by the government covered computer software, consumer electronics, and electrical and electronic appliances for home use. The cap on royalty rates was lifted by the DIPP in 2009.[6] It is submitted in the case of mobile device technology, we are witnessing a situation similar to that of the 1990s. In this sphere, most of the patent holders are multinational corporations which results in large royalty amounts leaving India. At the same time, litigation over patent infringement in India has limited the manufacture and sale of mobile devices of homegrown brands. While SEP litigation in India is indeed comparable to international SEP litigation on broader issues raised, specifically competition law concerns, but differs crucially where the parties are concerned. International SEP litigation is largely between multinational corporations with substantial patent portfolios, capable of engaging in long drawn out litigations, or engaging in other strategies including setting off against each other’s patent portfolios. Dynamics in the Indian market differ – with a larger SEP holder litigating against smaller manufacturers, many of whom are indigenous, homegrown.

In June, 2013, we had recommended to the erstwhile Hon’ble Minister for Human Resource Development[7] that a patent pool of essential technologies be established, with the compulsory licensing mechanism. Subsequently, in February, 2015, we reiterated this request to the Hon’ble Prime Minister.[8] We propose that the Government of India initiate the formation of a patent pool of critical mobile technologies and mandate a five percent compulsory license.[9] As we have stated in our request to the Hon’ble Prime Minister, we believe that such a pool would “possibly avert patent disputes by ensuring that the owners' rights are not infringed on, that budget manufacturers are not put out of business owing to patent feuds, and that consumers continue to get access to inexpensive mobile devices. Several countries including the United States issue compulsory licenses on patents in the pharmaceutical, medical, defence, software, and engineering domains for reasons of public policy, or to thwart or correct anticompetitive practices.”[10] We believe that such a measure will not be in breach of our international obligations under the TRIPS Agreement.
Increase transparency in the patent system by making patentees comply with the law: The Patents Act, 1970 requires patentees and licensees to submit a statement on commercial working of the invention to the Controller every year.[11] Form 27 under section 146(2) of the Act lists the details necessary to be disclosed for compliance of the requirement of “working”. A jurisprudential analysis reveals the rationale and objective behind this mandatory requirement. Undeniably, the scheme of the Indian patent regime makes it amply clear that “working” is a very important requirement, and the public as well as competitors have a right to access this information in a timely manner, without undue hurdles. Indeed, as the decision[12] in Natco Pharma v. Bayer Corporation[13] reveals, the disclosures in Form 27 were crucial to determining the imposition of a compulsory license on the patentee. Thus, broadly, Form 27 disclosures can critically enable willing licensees to access patent “working” information in a timely manner.

However, there has been little compliance of this requirement by the patentees, despite the Indian Patent Office (IPO) reiterating the importance of compliance through the issuance of multiple public notices[14] (suo motu and in response to a public interest litigation filed in 2011[15]), and, reminding the patentees that noncompliance is punishable with a heavy fine.[16] Findings of research submitted by one of the parties[17] in the writ of the 2011 public interest litigation Shamnad Basheer v. Union of India and others[18] reveal as follows. First, a large number of Form 27s are unavailable for download from the website of the IPO. This possibly indicates that the forms have either not been filed by the patentees with the IPO, or have not been uploaded (yet) by the IPO. Second, a large number of filings in the telecom sector remain incomplete.

In 2015, CIS queried the IPO website for Form 27s of mobile device patents to arrive at a similar conclusion. We obtained 4,916 valid Form 27s, corresponding to 3,126 mobile device patents from public online records. These represented only 20.1% of all Forms 27 that should have been filed and corresponded to only 72.5% of all mobile device patents for which Forms 27 should have been filed. Forms 27 were missing for almost all patentees, and even among Forms 27 that were obtained, almost none contained useful information regarding the working of the subject patents or fully complying with the informational requirements of the Indian Patent Rules.[19]

Further, in our study, we observed that patentees adopted drastically different positions regarding the definition of patent working, some arguing that importation of products into India or licensing of Indian suppliers constituted working, while others even went so far as to argue that the granting of a worldwide license to a non-Indian firm constituted working in India. Several significant patentees claimed that they or their patent portfolios were simply too large to enable the provision of information relating to individual patents, and instead provided gross revenue and product sale figures, together with historical anecdotes about their long histories in India.

The Indian government has made little or no effort to monitor or police compliance with Form 27 filings, undoubtedly leading to significant non-compliance. We also propose the alteration of the Form 27 template[20] to include more disclosures.[21] Presently, patentees are required to declare number of licensees and sub-licensees. We specifically propose that the format of Form 27 filings be modified to include patent pool licenses, with an explicit declaration of the names of the licensees and not just the number.
Require royalty rates to be decided on the basis of the Smallest Saleable Patent Practicing Component: Most modern telecommunication and IT devices are complex with numerous technologies working in tandem. Different studies indicate that the number of patents in the US applicable to smartphones is between 200,000 and 250,000.[22] A comprehensive patent landscape of mobile device technologies conducted by CIS reveals that nearly 4,000 patents are applicable to mobile phones sold in India.[23] It is thus extremely difficult to quantify the exact extent of interaction and interdependence between technologies in any device, in such a way that the exact contribution of the patented technology to the entire device can be determined. Thus, we submit that royalty rates for SEPs should be based on the smallest saleable patent practising component, and not on the net price of the downstream product.

The net cost of the device is almost always several times that of the chipset that implements the patented technology. Armstrong et al[24] have found that the cost of a 4G baseband chip costs up to $20 including royalties in a hypothetical $400 phone sold in the US. One of the litigating parties in the ongoing patent infringement lawsuits in India has stated that one of the reasons for preferring to leverage its patents as downstream as possible in the value chain is that it will earn the company more royalties.[25] In instances where patent exhaustion occurs much earlier in the value chain, such as in the case of the company’s cross-licenses with Qualcomm (another company that owns patents to chip technologies), the company does not try to obtain royalties from the selling prices of devices for the cross-licensed technologies. It is submitted that such market practices could be detrimental to the government’s objectives such as providing a mobile handset to every Indian by 2020 as a part of the Digital India programme.[26] It is also worth noting in this context that the mobile device is the first and only medium of access to the Internet and telecom services for a large number of Indians, and, consequently, the only gateway to access to knowledge, information and critical services, including banking.[27]

“Q.5 Please suggest a dispute resolution mechanism for determination of royalty distribution on FRAND (Fair Reasonable and Non Discriminatory) basis.”

The licensing of SEPs on FRAND terms requires the parties to negotiate “reasonable” royalty rates in good faith, and apply the terms uniformly to all willing licensees. It is our submission that if the parties cannot agree to FRAND terms, they may enter into binding arbitration. Further, if all efforts fail, there exist remedies under the Patents Act and the Competition Act, 2002 to address the issues.

Section 115 of the Patents Act empowers the court to appoint an independent scientific adviser “to assist the court or to inquire and report upon any such question of fact or of opinion (not involving a question of interpretation of law) as it may formulate for the purpose.”[28] Such an independent adviser may inform the court on the technical nuances of the matter.

Further, under the Patents Act, pending the decision of infringement proceedings the Court may provide interim relief, if the plaintiff proves first, a prima facie case of infringement; second, that the balance of convenience tilts in plaintiff’s favour; and, third, that if an injunction is not granted the plaintiff shall suffer irreparable damage. However, it is our suggestion that courts adopt a more cautious stance towards granting injunctions in the field of SEP litigation. First, in our opinion, injunctions may prove to be a deterrent to arrive at a FRAND commitment, in particular, egregiously harming the willing licensee. Second, especially in the Indian scenario, where litigating parties operate in vastly different price segments (thereby targeting consumers with different purchasing power), it is difficult to establish that “irreparable damage” has been caused to the patent owner on account of infringement. Third, we note the approach of the European Court of Justice, which prohibited the patent holder from enforcing an injunction provided a willing licensee makes an offer for the price it wishes to pay to use a patent under the condition that it deposited an amount in the bank as a security for the patent holder.[29] Fourth, we also note the approach of the Federal Trade Commission in the USA, which only authorizes patent holders to seek injunctive relief against potential licensees who have either stated that they will not license a patent on any terms, or refuse to enter into a license agreement on terms that have been set in the final ruling of a court or arbitrator.[30] Further, as Contreras (2015)[31] observes, that the precise boundaries of what constitutes as an unwilling licensee remains to be seen. We observe a similar ambiguity in Indian jurisprudence, and accordingly submit that courts should carefully examine the conduct of the licensee to injunct them from the alleged infringement.

Concluding Remarks

We are thankful to TRAI for the opportunity to make these submissions. It would be our pleasure and privilege to discuss these comments with the TRAI; and, supplement these with further submissions if necessary. We also offer our assistance on other matters aimed at developing a suitable policy framework for SEPs and FRAND in India, and, working towards the sustained innovation, manufacture and availability of mobile technologies in India.

[1] Department of Industrial Policy and Promotion Discussion Paper on Standard Essential Patents and their Availability on Frand Terms, available at https://cis-india.org/a2k/blogs/discussion-paper-on-standard-essential-patents-and-their-availability-on-frand-terms (last accessed November 13, 2017)

[2] Anubha Sinha, Nehaa Chaudhari and Rohini Lakshane, “CIS’ Comments on Department of Industrial Policy and Promotion Discussion Paper on Standard Essential Patents and their Availability on Frand Terms” (April 23, 2016); available at https://cis-india.org/a2k/blogs/comments-on-department-of-industrial-policy-and-promotion-discussion-paper-on-standard-essential-patents-and-their-availability-on-frand-terms

[3] www.cis-india.org

[4] Rohini Lakshané, CIS, List of Technical Standards and IP Types (Working document), available at https://drive.google.com/file/d/0B8SgjShAjhbtaml5eW50bS01d2s/view?usp=sharing (last accessed 13 November, 2017).

[5] Kumkum Sen, News on Royalty Payments Brings Cheer in New Year, available at http://www.businessstandard.com/article/economypolicy/newsonroyaltypaymentbringscheerinnewyear11001 0400044_1.html (last accessed 13 November, 2017).

[6] See Sanjana Govil, Putting a Lid on Royalty Outflows How the RBI Can Help Reduce India’s IP Costs , available at http://cisindia.org/a2k/blogs/lidonroyaltyoutflows (last accessed 13 November, 2017) for a discussion on the introduction of royalty caps in the early 1990s, and its success in reducing the flow of money out of India.

[7] Nehaa Chaudhari, Letter for Establishment of Patent Pool for Low cost Access Devices through Compulsory

Licenses, available at http://cisindia.org/a2k/blogs/letterforestablishmentofpatentpoolforlowcostaccessdevices (last accessed 13 November, 2017).

[8] See Rohini Lakshané, Open Letter to PM Modi, available at http://cisindia.org/a2k/blogs/openlettertoprimeministermodi (last accessed 13 November, 2017) for further details of CIS’ proposal.

[9] Rohini Lakshané, FAQ: CIS’ proposal to form a patent pool of critical mobile technology, September 2015, available at http://cisindia.org/a2k/blogs/faqcisproposalforcompulsorylicensingofcriticalmobiletechnologies (last accessed 13 November, 2017).

[10] Id.

[11] Section 146(2) of the Patents Act, 1970.

[12] Sai Vinod, Patent Office Finally Takes Form 27s Seriously, available at http://spicyip.com/2013/02/patentofficefinallytakesform27s.html (last accessed 13 November, 2017).

[13] Order No. 45/2013 (Intellectual Property Appellate Board, Chennai), available at http://www.ipab.tn.nic.in/0452013.htm (last accessed 13 November, 2017).

[14] Intellectual Property India, Public Notice, available at

http://www.ipindia.nic.in/iponew/publicNotice_Form27_12Feb2013.pdf ((last accessed 13 November, 2017) and Intellectual Property India, Public Notice, available at http://ipindia.nic.in/iponew/publicNotice_24December2009.pdf (last accessed 13 November, 2017).

[15] Supra note 11.

[16] Id.

[17] See research findings available at http://spicyip.com/wpcontent/uploads/2015/05/FORM27WP1Rcopy.pdf (last accessed 13 November, 2017).

[18] In the High Court of Delhi, W.P.(C) 5590/2015. This litigation is currently ongoing. See, illustratively, Mathews P. George, Patent Working in India: Delhi HC issues notice in Shamnad Basheer v. Union of India & Ors. – I , available at http://spicyip.com/2015/09/patentworkinginindiadelhihcissuesnoticeinshamnadbasheervunionofindiaorsi.html (last accessed 13 November, 2017).

[19] Contreras, Jorge L. and Lakshané, Rohini and Lewis, Paxton, Patent Working Requirements and Complex Products (October 1, 2017). NYU Journal of Intellectual Property & Entertainment Law, Forthcoming. Available at SSRN: https://ssrn.com/abstract=3004283

[20] Form 27, The Patents Act, available at http://ipindia.nic.in/ipr/patent/manual/HTML%20AND%20PDF/Manual%20of%20Patent%20Office%20Practice%20and%20Procedure%20%20html/Forms/Form27.pdf (last accessed November 13, 10`7).

[21] However, we came across some complaints raised by patentees and industry observers regarding the structure of the Form 27 requirement - namely, patents covering complex, multi-component products that embody dozens of technical standards and thousands of patents are not necessarily amenable to the individual-level data requested by Form 27. See Contreras, Jorge L. and Lakshané, Rohini and Lewis, Paxton, Patent Working Requirements and Complex Products (October 1, 2017). NYU Journal of Intellectual Property & Entertainment Law, Forthcoming. Available at SSRN: https://ssrn.com/abstract=3004283

[22] Mark Lemley and Carl Shapiro, Patent Holdup and Royalty Stacking, 85 Tex. L. Rev. at 2015 ; See also, for e.g.,

RPX Corporation, Amendment No. 3 to Form Sl,11 Apr. 2011, at 59, available at http://www.sec.gov/Archives/edgar/data/1509432/000119312511101007/ds1a.htm (last accessed 22 April, 2016), quoting “Based on our research, we believe there are more than 250,000 active patents relevant to today’s

smartphones…” .; See further Steve Lohr, Apple Samsung Case Shows Smartphone as Legal Magnet, New York Times, 25 Aug. 2012, available at http://www.nytimes.com/2012/08/26/technology/applesamsungcaseshowssmartphoneaslawsuitmagnet.html (last accessed November13, 2017).

[23] Jorge L. Contreras and Rohini Lakshané, Patents and Mobile Devices in India: An Empirical Survey, available at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2756486 (last accessed 13 November, 2017).

[24] Ann Armstrong, Joseph J. Mueller and Timothy D. Syrett, The SmartphoneRoyalty Stack:Surveying Royalty Demands for the Components Within Modern Smartphones, available at https://www.wilmerhale.com/uploadedFiles/Shared_Content/Editorial/Publications/Documents/TheSmartphoneRoyaltyStackArmstrongMuellerSyrett.pdf (last accessed 13 November, 2017)

[25] Florian Mueller, Ericsson Explained Publicly why it Collects Patent Royalties from Device (Not Chipset) Makers, available at http://www.fosspatents.com/2014/01/ericssonexplainedpubliclywhyits.Html (last accessed 13 November, 2017).

[26] Romit Guha and Anandita Singh Masinkotia, PM Modi’s Digital India Project:Government to Ensure that Every Indian has a Smartphone by 2019, available at http://articles.economictimes.indiatimes.com/20140825/news/53205445_1_digitalindiaindiatodayfinancialservices (last accessed 13 November, 2017).

[27] Nehaa Chaudhari, Standard Essential Patents on Low Cost Mobile Phones in India: A Case to Strengthen Competition Regulation? available at http://www.manupatra.co.in/newsline/articles/Upload/08483340C1B94BA4B6A9D6B6494391B8.pdf (last accessed 13 November, 2017).

[28] Section 115 of the Patents Act, 1970.

[29] Huawei Technologies Co. Ltd v. ZTE Corp. and ZTE Deutschland , Judgment of the Court (Fifth Chamber) of 16 July 2015 in GmbH C170/13.

[30] Third Party United States Fed. Trade Commission’s Statement on the Public Interest, In re Certain Wireless Communication Devices, Portable Music and Data Processing Devices, Computers and Components Thereof, U.S. Int’l Trade Comm’n, Inv. No. 337TA745 (Jun. 6, 2012).

[31] Jorge L. Contreras, A Brief History of FRAND: Analyzing Current Debates in Standard Setting and Antitrust Through a Historical Lens , 80 Antitrust Law Journal 39 (2015), available at h ttp://ssrn.com/abstract=2374983 or http://dx.doi.org/10.2139/ssrn.2374983 (last accessed 13 November, 2017).

For more details visit https://cis-india.org/telecom/blog/cis-comments-on-promoting-local-telecom-equipment-manufacturing

CIS' submission to Indian Patent Office on Examples of Excluded Patentable subject-matter under Section 3(k) for incorporation in the yet-to-be-released Guidelines for Computer Related Inventions

sinha — 2016-02-22T09:36:52Z

The Patent Office had put the Guidelines on Computer Related Inventions, 2015 in abeyance last month. This step was taken after several stakeholders including CIS made representations to the Office about serious substantive legal issues in the document. In furtherance of the consultative process, a meeting was conducted in Mumbai with various stakeholders, chaired by the Controller General of Patents Design Trademarks (“CGPTDM”). Anubha Sinha participated in the meeting, after which the CGPTDM invited submissions from stakeholders on specific examples on exclusions from patentability under section 3(k) of the Patents Act, 1970, for possible incorporation in the Guidelines for Examination of Computer Related Inventions.

This post contains CIS' submission on specific examples on exclusions from patentability under section 3(k). You may view the Guidelines here. To read the letter sent to the PMO, click here. To read CIS' analysis of the Guidelines, click here.

It is worth noting that the IPO requested for negative examples of patentability [CRIs that cannot be patented under the Act]. While it is commendable that the IPO sought inputs from stakeholders for negative examples, stakeholders have often requested the IPO to provide positive examples of patentable CRIs. The yet-to-be-released-Guidelines should also mention a sufficient number of positive examples to provide better clarity to stakeholders.

ILLUSTRATIVE EXAMPLES ON EXCLUSION FROM PATENTABILITY OF COMPUTER RELATED INVENTIONS
to
THE HON'BLE CONTROLLER GENERAL OF PATENTS DESIGNS AND TRADEMARKS
by
THE CENTRE FOR INTERNET AND SOCIETY, INDIA

I. PRELIMINARY

1. This submission presents specific examples on exclusions from patentability, under section 3(k) of the Patents Act, 1970, for possible incorporation in the Guidelines for Examination of Computer Related Inventions.

2. This submission is based on the Guidelines for Examination of Computer Related Inventions released in September 2015("2015 Guidelines/ Guidelines"). The Guidelines are in abeyance, presently.

3. The Centre for Internet and Society ("CIS") commends the Hon'ble Controller General of Patents Designs and Trademarks ("CGPTDM"), Department of Industrial Policy and Promotion, Ministry of Commerce and Industry, Government of India for its efforts at seeking inputs from various stakeholders. CIS is thankful for the opportunity to have been a part of this discussion since 2008; and to provide this submission in furtherance of of the feedback process continuing from the stakeholders' meeting conducted by the Hon'ble CGPTDM on 19.01.2016.

II. OVERVIEW

4. The Centre for Internet and Society is a non-governmental organization engaged in research and policy work in the areas of, inter alia, intellectual property rights, access to knowledge and openness.[1] This submission is consistent with CIS' commitment to safeguarding general public interest, and the interests and rights of various stakeholders involved. Accordingly, this submission aims to further these principles.

III. SUBMISSIONS

5. Broadly, we submit that the Guidelines narrowed the legal exclusions on patentable subject matter in section 3(k). Consequently, the Guidelines were arguably in violation of section 3(k).

6. To supply clarity to the examination procedure, CIS has proposed a definition to "computer programme per se" in its previous submissions to the Indian Patent Office :

"Computer programme per se in the relevant clause means (a) any computer programme in the abstract, (b) any computer programme expressed in source code form, including source code recorded on an information storage medium, or (c) any computer programme that can be executed or executes on a general purpose computer, including computer programme object code designed for execution on a general purpose computer that is recorded on an information storage medium."[2]

Further, since the inclusion of computer programmes in a broader application should not render the application ineligible subject matter, CIS previously proposed an addition to the test:

"We propose a new part to the subject-matter test to make the clause clearer. The Manual should specify that "the computer programme portions of any claimed invention should be treated as if it were covered by prior art and patentability should thus be determined with respect to the other features of the invention". This way, we can ensure that an invention which merely uses or implements a computer programme is not granted patent on the basis of the inventiveness of the computer programme per se." [3]

7. Accordingly, CIS would like to highlight examples of specific patent applications on exclusions from patentability, under section 3(k) of the Patents Act, 1970, for considering their possible incorporation in the Guidelines. The applications are:

7.1 Application No.: 112/CHE/2008

Title: Bill payment card method and system

The Asst. Controller General correctly examined and rejected the invention on the grounds of it purely relating to a business method and processor configured software. Applicant had contended, inter alia, that the method claimed a series of steps being executed with hardware features , including a communication network, communication link and other hardware peripherals intrinsic to the execution of the claimed method.

Further, in their reply to the objections in the FER, the applicants stated:

" There is present a database to perform the functions of the card electronically. The processor is configured to receive information, transmit information and/or authorize the card and associated information thereof. The processor may be configured to produce reports, issue reports, confirmation receipt etc.

It also consists of a card which may include electronic and/or magnetic features e.g. a microprocessor, memory and an electronic chip, a magnetic strip, a USB flash drive and a wireless communication device. The card may be configured to communicate with a wired devices, such as by USB, coaxial cable..."

"...The whole process brings out technical effect in a way that this system allows for the payment of bills without the use of a bank account, credit card, or money order. Hence it is a system with technical features producing technical effect. Hence, enhancement of a business or teaching a way in which a business is carried out is essentially not the the prime motive of the instant invention. With its technical character, technical features and enhancement in business comes as by-product of the implementation of the instant invention."

The invention was rejected.

7.2 Application No.: 48/CHE/2005

Title: Structured approach to software specification

The applicant asserted in their reply to the FER[4] that the claims related to an information managing system including at least on processing unit, a system memory, a system bus, a LAN, a remote computer, a video adapter and monitor and a software architecture performing a particular task or implement particular abstract data types. As a result, they contended that the said invention did not fall under the purview of section 3(k) of the Indian Patents Act, 1970.

The application was correctly rejected by the Controller in the first instance itself.

7.3 Application No.: 2019/CHENP/2004

Title: Apparatus and method of a distributed capital system

The FER included objections regarding lack of novelty, inventiveness, lack of constructive features, lack of support for the word "means" , objections towards a business method, computer program per- se towards an algorithm (objections incl. 3(k)) per se and also towards claims relating to mere medium etc.

Further, it was stated by the Office that even the amended claims failed to overcome the said objections because, inter alia, " the subject matter of the claims related to a method of carrying out financial transactions with one or more parties in a Distributed capital system implemented by pure software I algorithms per-se. The said method is a mere business method/algorithm which is implemented in a computer network through software modules."[5]

The invention was rejected.

7.4. Application No.: 4986/DELNP/2006

Title: A method of tracking a radio frequency signal by means of electronic equipment.

The objections in the FER were that, the subject matter claimed fell within the scope section 3(k) as amended by the Patents (Amendment) Act 2005, for being algorithm based method. Subject matter as described and claimed in computer program product claims as well fell within the scope of section 3(k), for being relating to computer program per se. The examination correctly disregarded the implementation of the invention on electronic equipment.

The invention was rejected.

7.5 Application No.: 1405/MUMNP/2008

Title: Method for determining an output value from a sensor in automation engineering

Order issued u/s 15 clearly pointed out that the contribution of the applicant was a mathematical method to determine the output variable from the input variable. And since mathematical methods were intellectual in nature, the invention lacked technical advancement.

The invention was rejected.

7.6. Application No.: 914/CHE/2007

Title: A system, method to generate transliteration and method for generating decision tree to obtain transliteration

One of the claims read:

"A system to generate transliteration of source language script into target language script using decision tree based technique with automated supervised learning, said system comprising of

i. a device having memory;

ii. an input device for entering text;

iii. transliteration engine to maintain patterns and predetermined rules used in transliteration of source language script into target language script;

iv. a display device for displaying entered text and transliterated textl and

v. an interface to enable typing in any language and optionally to integrate the transliteration system into existing web-pages."

The application was correctly rejected by the Examiner for on grounds of falling under section 3(k), inter alia.

8. CIS welcomes the initiative of the Hon'ble CGPTDM to provide said illustrative examples. CIS believes that it is essential that the Guidelines avoid violation of section 3(k), and are formed complying with the Indian Patents Act, 1970 and relevant judicial decisions; and keeping in mind the legislative intent.

9. CIS would be willing discuss these submissions with the Hon'ble CGPTDM; and supplement them with further submissions if necessary, and offer any other assistance towards the efforts at developing a Guidelines for Examination of Computer Related Inventions.

On behalf of the Centre for Internet and Society
Anubha Sinha
Programme Officer

[1] See www.cis-india.org for details about CIS' work.

[2] Pranesh Prakash, CIS' submission on Draft Patent Manual 2010 , available at < http://cis-india.org/a2k/blogs/cis-submission-draft-patent-manual-2010 >

[3] Ibid.

[4] See First Examination Report, available at <48-CHE-2005 EXAMINATION REPORT REPLY RECEIVED 31-05-2013.pdf>

[5] See First Examination Report for Application No.: 2019/CHENP/2004

For more details visit https://cis-india.org/a2k/blogs/cis-submission-to-indian-patent-office-on-examples-of-excluded-patentable-subject-matter-under-section-3-k-for-incorporation-in-the-yet-to-be-released-guidelines-for-computer-related-inventions

IP Meetup #01: Prof. Biswajit Dhar on 'Intellectual Property issues: The Way Forward post Nairobi WTO Ministerial'

sinha — 2016-02-04T13:25:34Z

Prof. Biswajit Dhar will deliver a short talk on what the WTO Nairobi Ministerial means for intellectual property issues, and the way forward, on Sunday, February 7, 2016 at the Centre for Internet & Society's Delhi office, at 4 p.m.

We would like to invite you to the inaugural session of a series of IP focused meetups. The meetups are aimed at bringing folks together working within or interested in IP law, to discuss recent developments with reference to access to knowledge, climate change, health, trade, etc.

The talk will be followed by a round of discussion, after which the floor will be thrown open for other pressing/relevant IP developments.

Please join us for tea and refreshments at 3.30 pm.

Please RSVP by dropping a line at anubha@cis-india.org.

CIS Delhi's location on Google Maps: https://goo.gl/maps/nPKkoQFhRSt

For more details visit https://cis-india.org/a2k/events/ip-meetup-01-prof-biswajit-dhar-on-intellectual-property-issues-the-way-forward-post-nairobi-wto-ministerial

The new Guidelines for Computer Related Inventions are a big win for FOSS in India!

sinha — 2016-02-24T06:30:37Z

India is one of the few countries which permits patenting of software – a monopolization that has only benefited established corporations and largely throttled innovation in the software industry, worldwide. CIS has consistently advocated against patentablity of software and in a major victory last week, software patenting in India died a little more. This happened via the newly issued Guidelines for the Examination of Computer Related Inventions, which introduces a new test to restrict software patenting – in essence the same legal test that CIS had been proposing since 2010. This post highlights the new test and other noteworthy changes in the Guidelines.

When the Guidelines for examination of Computer Related Inventions(“ 2015 Guidelines”) were released last year, it became obvious that they would have an adverse impact on innovation in the Indian software industry. Further, the 2015 Guidelines were legally defective since they ran counter to the object of Section 3(k) of the Patents Act, 1970, which is to unconditionally exclude mathematical and business methods, computer programs per se, and algorithms from patentable subject matter. To stop and prevent egregious harms, civil society organisations collectively wrote to the Prime Minister's Office flagging off the defects and requested for a recall of the Guidelines. In December 2015, the Indian Patent Office promptly recalled the 2015 Guidelines and held a consultation to discuss the concerns raised in the letter.

Based on submissions by various stakeholders, the Patent Office released a new set of Guidelines(“Guidelines”), which are not only a staggering improvisation from all previous versions, but also introduce a new three step test to determine applicability of section 3(k), an area of Indian patent law that has been notoriously full of uncertainties:

5. Tests/ Indicators to determine Patentability of CRIs (“Computer Related inventions”):

Examiners may rely on the following three stage test in examining CRI applications:

(1) Properly construe the claim and identify the actual contribution;

(2) If the contribution lies only in mathematical method, business method or algorithm, deny the claim;

(3) If the contribution lies in the field of computer programme, check whether it is claimed in conjunction with a novel hardware and proceed to other steps to determine patentability with respect to the invention. The computer programme in itself is never patentable. If the contribution lies solely in the computer programme, deny the claim. If the contribution lies in both the computer programme as well as hardware, proceed to other steps of patentability.

CIS had proposed the exact same test in its earlier submissions(2010) to the Patent Office, albeit worded differently. We submitted:

"We propose a new part to the above test to make the clause clearer. The Manual should specify that “the computer programme portions of any claimed invention should be treated as if it were covered by prior art and patentability should thus be determined with respect to the other features of the invention”. This way, we can ensure that an invention which merely uses or implements a computer programme is not granted patent on the basis of the inventiveness of the computer programme per se."

Further, the Guidelines also recognise that CRIs may fall under sections 3(k), 3(l), 3(m) and 3(n):

2.2. The Patents (Amendment) Act, 2002 also introduced explicit exclusions from patentability under section 3 for CRIs as under:

3(k) a mathematical or business method or a computer programme per se or algorithms;

(l) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;

(m) a mere scheme or rule or method of performing mental act or method of playing game;

(n) a presentation of information;

And thus CRIs as such cannot be patentable, if they fall in either of the above mentioned exclusions. Overall, the new Guidelines offer more clarity and stick to the Patents Act, 1970's intention of disqualifying patentability of computer programmes per se. We will soon post a detailed analysis of the Guidelines. In the meantime, you may read CIS' research on the subject in the section below.

CIS' Research and Submissions against Software Patenting

Over the past years, CIS has produced research and consistently made submissions advocating the roll- back of software patenting:

Arguments Against Software Patents in India, 2010

CIS Submission on Draft Patent Manual, 2010

Comments on the Draft Guidelines for Computer Related Inventions, 2013

Guidelines for Examination of Computer Related Inventions: Mapping the Stakeholders' Response, 2014

Comments on the Guidelines for Examination of Computer Related Inventions (CRIs), 2015

CIS' submission to Indian Patent Office on Examples of Excluded Patentable subject-matter under Section 3(k) for incorporation in the yet-to-be-released Guidelines for Computer Related Inventions, 2016

For more details visit https://cis-india.org/a2k/blogs/the-new-guidelines-for-computer-related-inventions-are-a-big-win-for-foss-in-india