Centre for Internet and Society

Pranesh Prakash: Influencing India's IP Laws

praskrishna — 2014-02-25T06:20:31Z

Pranesh Prakash believes intellectual property laws need to evolve and change with time.

Samar Srivastava's article was published in Forbes India Magazine on February 15, 2014.

At an age where his contemporaries are still junior litigators and aspiring lawyers, Pranesh Prakash, 28, is already a recognisable name in the filed of legal activism.

In 2013 he worked with the World Intellectual Property Organization to draft a treaty for the blind. It provides for an exception to copyright laws so that books can be converted into accessible formats for the blind and visually impaired, and exchanged across borders.

For Prakash the treaty capped a signal achievement in intellectual property and copyright—an area he has been working in since graduating from the National Law School, Bangalore. In his closing speech at the diplomatic conference at Marrakesh, Morocco, Prakash said: “When copyright doesn’t serve public welfare, states must intervene... Importantly, markets alone cannot be relied upon to achieve a just allocation of informational resources, as we have seen clearly from the book famine that the blind are experiencing.”

Prakash’s work on intellectual property has brought him recognition through affiliations: He is an Access to Knowledge Fellow at the Information Society Project at Yale Law School. In 2012, he was selected as an Internet Freedom Fellow by the US State Department.

“I was always interested in doing public interest work,” says Prakash. An internship with activist lawyer Rajeev Dhawan cemented his desire. Prakash is now prominent in a line of thinkers working in the area of freedom of expression, internet governance and intellectual property.

It is clear that existing laws in these areas are inadequate and a new jurisprudential setup needs to evolve. For example, the same standards often apply to print and internet media; they fail to recognise that, say, tweets have a different impact than newspapers headlines.

Prakash’s criticism of governments blocking websites stood out, but his recommendations were not accepted. He proposed that all intermediaries, like the ISP and the domain host, not be bunched, and separate standards be imposed on them, based on their editorial role in content creation.

“What distinguishes his work is the impact it has on the public at large,” says Gautam John, head, Karnataka Learning Partnership at the Akshara Foundation. “His work in the area is cutting edge. There is no one doing that work.”

Then there is his work with Section 66A of the IT Act. Under the section, anyone who sends false, offensive or inappropriate content by a computer or communication device can be punished with three years of imprisonment. This section has been misused by the police. Prakash has long argued that the law must be more specific in what it defines as offensive, and that the government needs to engage more with civil society and industry to end the antagonistic and selective manner in which the law is imposed.

Efforts of the Centre for Internet and Society (CIS), Bangalore, where Prakash is policy director, have resulted in rules being amended. Now, only officers of the rank of DCP and above can make an arrest. CIS, set up in 2008, has also made representations on the copyright law to Parliamentary Standing Committees.

Prakash’s activism has had another significant effect on intellectual property in India. By a 2008 Bill, the government had tried to privatise publicly-funded intellectual property. Prakash was part of a sustained campaign against the Bill, and in 2011 it was shelved.

For more details visit https://cis-india.org/news/forbes-india-february-15-2014-samar-srivastava-pranesh-prakash-influencing-indias-ip-laws

The Game of IPR: Insights from the 6th Global Intellectual Property Convention in Hyderabad

samantha — 2014-01-31T09:56:10Z

IP practitioners and IP creators were among the 1700 participants to gather at the Hyderabad International Convention Centre earlier this month. Here, CIS had the opportunity of listening in on perspectives around the “Optimization of economic value of innovation & IPR in the global market” while attending numerous talks and sessions that were held over the course of the convention’s three days.

One of the event's speakers, Mr. Narendra Sabharwal, IPR-Chair of FICCI, speaks of the immense value of IPR, while serving as protection as well as collateral for investors. (Photo credit: GIPC 2014)

This year’s Global Intellectual Property Convention (GIPC) was held in Hyderabad January 16-18, 2014 by ITAG Business Solutions Ltd. in association with the Institute of International Trade (iitrade). As the 6th of its kind, the event was held in hopeful contribution “towards society with the active support and cooperation of the IP fraternity,” says ITAG Founder and Director, Dr. D. R. Agarwal, while offering a “good opportunity for learning and business networking through one to one interaction in a pre-arranged manner under a conducive environment.”

The theme at bay had been “Optimizing the economic value of innovation & IPR in global market.” In respect of this central focus, common themes across panel discussions and workshops included IP management, monetisation, application drafting, and litigation, with particular emphasis on India’s ‘Pharma’ industry. Over 100 speakers and panelists shared their personal knowledge from experience in the industry, and largely consisted of representatives from law firms, IP consultancies, pharmaceutical companies, and business organisations; all of which from India, Europe and the USA. As an attendee representing the Centre for Internet & Society (CIS), a research institute that works to address issues related to intellectual property (IP) reform, I had the privilege of listening to such perspectives on intellectual property from an alternative outlook.

On the other hand, if exploiting too much by “abusing one’s monopoly, you are [setting] certain conditions, which are neither germane nor connected to the patent, and more than what is statutory permissible.” Kumaran stresses the necessity for the intellectual property right (IPR) holder to comply to the rights given by statutory law.

The name of the game is the quality of drafting. It is the first and last chance." Vaidya D.P.,

Lakshmi Kumaran & Sridharan

Mr. Narendra Sabharwal, Panellist and IPR-Chair for the Federation of Indian Chambers of Commerce (FICCI), sought to demonstrate the immense value of innovation and IPR in technology, arts and culture globally, in explaining that a large portion of the EU’s GDP (39%), and employment (26%) are derived from IP-intensive industries (See study by European Patent Office here). Also argued was that enterprises and institutions can increase value through licensing of products and services, while also serving as protection, and which can then become “excellent collateral for investors,” he says. Among other points made, Sabharwal mentioned the need for more incubators in India. Currently, India acquires 200 new incubators each year compared to China’s 8000 new incubators annually. Opening more incubators will encourage innovation, he argues, leading to more marketable products and solutions.

Mr. William H. Manning, Partner of Robins, Kaplan, Miller & Ciresi L.L.P (USA), took on the role of the story teller while sharing particularly interesting cases of previous clients. Manning had explained the necessity to ask one question over and over throughout the entire IPR application process; that question being: “What difference does the invention make?”

In doing so, Manning was even able to take what would have been an ‘incremental’ patent—which is just distinct enough from prior art to get by—and turn it into a ‘foundational’ patent—generally adopted by the industry for 10-20 years before moving to a different technology. The better of these two types, however, is the ‘pioneering’ patent, an inventive leap in itself. This client success story definitely affirmed Speaker and Director of Lakshmi Kumaran & Sridharan, Vaidya D. P., when he said that “the name of the game is the quality of drafting. It is the first and last chance.” Manning had also claimed that 99.9% of patent in India are said to be incremental patents, with none being pioneering—at least not from the patent applications he’s seen in his 34 years of experience, anyway.

Also a rule of this game is the “Take now—pay later” rule, according to Manning, in which enterprises may “ignore the problem for now and move ahead with the product. If somebody sues you for patent litigation…. Take now—pay later.” Here, he makes reference to the judgements enterprises may make when misusing or infringing upon an IPR, while assessing the worth of doing so with the risks that may lie ahead. Often, an enterprise may find that it is more worthwhile to misuse or infringe and reap the benefits in the “now” while knowing there may be a chance they will have to “pay later.”

Throughout the convention, what I expected to be the elephant in the auditorium was surprisingly addressed quite often. Best said by Panellist, Mr. Mohan Dewan, “IPR only becomes an asset when it is misused or infringed upon.” Principal to R K Dewan & Co., Dewan compares IP rights with car insurance, which can only be cashed in when the car is stolen.

Applying for an IPR is a game in itself, that requires much knowledge of how it is played. Grab those power-ups or get eaten.	He then posed the question “how can we increase the economic value of an asset?”—presumingly so that one can capitalize when opportunity comes knocking—and responded to it in recommending the following measures: 1) ensuring one’s IPR is as strong as possible by drafting it according to national standards, 2) optimal protection—it is easier to register more than one at once! 3) diligence in auditing and licensing, and 4) staying alert and questioning what people are doing around you. These are only a few excerpts of the event’s many talks and panel discussions, yet these insights alone help to reveal the nature of the system where intellectual property rights reign. This is surely a system to be familiar with if it is within one’s interest to receive IPR for protection, yet I find it difficult to stop at the word “protection.” When you must learn how to play the game to ensure that you stay in it, I would say that IPR can extend well beyond protection, to be better off referred to as strategy. A strategy that enables you to reach a higher level and protects you from your opponents’ wrath. The higher the level, the more power-ups in reach and the higher you go. All the while undermining their chances of climbing up to where you are, and knocking them to even lower levels when possible. Lucky for you the majority of players are still stuck at level 1, but the nasty ones may be right behind you.

Applying for an IPR is a game in itself, that requires much knowledge of how it is played. Grab those power-ups or get eaten.

He then posed the question “how can we increase the economic value of an asset?”—presumingly so that one can capitalize when opportunity comes knocking—and responded to it in recommending the following measures: 1) ensuring one’s IPR is as strong as possible by drafting it according to national standards, 2) optimal protection—it is easier to register more than one at once! 3) diligence in auditing and licensing, and 4) staying alert and questioning what people are doing around you.

These are only a few excerpts of the event’s many talks and panel discussions, yet these insights alone help to reveal the nature of the system where intellectual property rights reign. This is surely a system to be familiar with if it is within one’s interest to receive IPR for protection, yet I find it difficult to stop at the word “protection.” When you must learn how to play the game to ensure that you stay in it, I would say that IPR can extend well beyond protection, to be better off referred to as strategy.

A strategy that enables you to reach a higher level and protects you from your opponents’ wrath. The higher the level, the more power-ups in reach and the higher you go. All the while undermining their chances of climbing up to where you are, and knocking them to even lower levels when possible. Lucky for you the majority of players are still stuck at level 1, but the nasty ones may be right behind you.

For more details visit https://cis-india.org/a2k/blogs/the-game-of-ipr-insights-from-the-6th-global-intellectual-property-convention-in-hyderabad

Open Letter to the Vatican: Request for Holy See to Comment on IPR

samantha — 2014-01-31T07:14:07Z

Due to the Holy See’s demonstrated pro-access position to medicines and published materials for persons with disabilities, the Centre for Internet and Society (CIS) requested for His Excellency, Archbishop Silvano M. Tomasi, to also consider copyrights, patents or IPR more generally, as the Holy See’s Permanent Observer at WIPO. We strongly encourage other organizations and civil society groups to modify this letter, as needed, and to contact the Holy See Mission to the United Nations (and WIPO) in Geneva in order to help us prompt His Excellency to contribute to the international dialogue on IPR.

You may view the original letter sent by CIS here.

His Excellency, Archbishop Silvano M. Tomasi, Apostolic Nuncio
Holy See Mission to the United Nations in Geneva
P.O. Box 28
1292 Chambésy
Geneva, Switzerland
mission.holy-see@ties.itu.int
+41 22 758 98 20

Friday, January 24, 2014

Your Excellency Archbishop Silvano M. Tomasi,

Subject: Call for the Holy See’s comment on Intellectual Property Rights

On behalf of the Centre for Internet and Society (CIS), Bangalore, India, I, Samantha Cassar, write to Your Excellency’s opinion on copyrights, patents and intellectual property rights.

We are a not-for-profit, non-governmental research organization that works on addressing policy issues related to access to knowledge and intellectual property law reform (http://cis-india.org/a2k), and accessibility for persons with disabilities (http://cis-india.org/accessibility) among other areas related to internet and information and communication technologies.

CIS is an accredited organization with the World Intellectual Property Organisation (WIPO) and a regular participant at the meetings of the Standing Committee on Copyrights and Related Rights (SCCR), the Standing Committee on the Law of Patents (SCP), as well as the Committee on Development and Intellectual Property.

At the outset, we commend Your Excellency for signing the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled. As one of the contributors to this treaty, we appreciate the concern of the Holy See for those who are marginalised within our information society by their disabilities.

As Pranesh Prakash, Policy Director from CIS noted at Marrakesh during the adoption of this treaty, “When copyright doesn't serve public welfare, states must intervene, and the law must change to promote human rights, the freedom of expression and to receive and impart information, and to protect authors and consumers.” We are happy to see this being done through a treaty as such.

Also said by Your Excellency, within the Holy See’s statement at the 9th Ministerial Conference of the World Trade Organization (WTO), “Among the most damaging concessions developing countries make in regional and bilateral agreements are those enhancing the monopolies on life-saving medicines, which reduce access and affordability and those that provide excessive legal rights to foreign investors, limiting the policy space for nations to promote sustainable and inclusive development.”

Given the Holy See’s demonstrated standpoint on the accessing of medicines and published works, we at the Centre for Internet and Society would like to request Your Excellency to also consider copyrights, patents or more generally, intellectual property rights (IPR), as Permanent Observer of the Holy See to the United Nations and Other International Organizations in Geneva.

On behalf of CIS, I am honoured to be writing to Your Excellency and for this request to be considered. Due to the ability of copyright and other forms of IPR to obstruct the access of one’s own human rights and even the sustainable development of one’s country, we feel this area must be crucially considered within an international dialogue—not only from a place of political strategy but also from principles of mercy and compassion.

With meetings approaching for both WIPO’s Standing Committee on the Law of Patents (January 27-31, 2014) and WIPO’s Committee on Development and Intellectual Property (May 19-23, 2014), we are very excited at the possibility of the Holy See enriching this discussion, and hope for such a contribution to take place when the international community is listening—at these meetings, or in any other form.

With Every Best Wish,
Sincerely Yours,

Samantha Cassar

Programme Associate
The Centre for Internet & Society

For more details visit https://cis-india.org/a2k/blogs/open-letter-to-the-vatican-request-for-holy-see-to-comment-on-ipr

Global Congress On IP and Public Interest Adopts Principles for Negotiations

praskrishna — 2014-01-13T08:32:25Z

A recent conference on intellectual property and the public interest concluded with the adoption of public interest principles to guide international trade negotiations and international organisations.

This article by William New was published in the Intellectual Property Watch on January 6, 2014.

The Open African Innovation Research (Open A.I.R.) conference and the Global Congress on IP & the Public Interest took place in Cape Town, South Africa from 9-13 December. The conference hosted by the University of Cape Town was funded by Canada’s International Development Research Centre (IDRC), and Germany’s Gesellschaft für Internationale Zusammenarbeit (GIZ), among others.

Principles adopted at the conference included transparency, preservation of rights within international agreements such as national flexibilities, protection for internet service providers, strengthening of the public domain, and access to knowledge and to medicines.

The event included a fairly diverse representation, and not all participants necessarily signed on to the principles that emerged from the event.

According to infojustice.org, some 200 people have signed the “Global Congress Declaration on Public Interest Principles for International IP Negotiations,” which is available here.

The declaration calls for “’a positive agenda in international intellectual property law making’ which would include a more open negotiating process, respect for stakeholders’ social and economic welfare, and preserve states’ freedoms to protect access to knowledge goods,” infojustice.org said.

In particular, the declaration took aim at the Trans-Pacific Partnership agreement (TPP) being negotiated by 12 countries led by the United States. It urged negotiators of the TPP and future negotiations to ensure the “ongoing release of proposed legal provisions for public comment and maximize the ability of all interested persons and organizations to observe and participate in negotiation processes.”

Other principles, which echo debates at international organisations in Geneva, include ensuring that nations: retain sovereignty to take actions in their public interest without constraint from intellectual property rights, be able to use anti-circumvention measures without liability, and that IP enforcement measures be “reasonable and proportional.”

Additional principles called for avoiding “the creation of new dispute resolution fora parallel to, and that may conflict with, the multilateral system,” and ensuring that IP agreements are “consistent with international law, including international human rights law and the Convention on Biological Diversity.”

Finally, the declaration said: "We record our serious concerns about the closed and secretive processes being used for current international negotiations while acknowledging the efforts of some countries to promote positive proposals within them."

Statement on Global Fund IP Policy and Generics

Also at the Cape Town event, a statement was adopted raising concern over a policy being considered by the Global Fund for AIDS, Tuberculosis and Malaria that would establish tiered pricing for medicines.

“We note with growing concern the weakening of the Global Fund’s support for expanding access to safe, affordable generic medications as the answer to unaffordable essential drugs,” the statement said. “We are extremely concerned about the recent announcement of a ‘blue-ribbon Task Force’ on tiered-pricing of medicines in middle-income countries.”

In addition, the statement raised concern about a new Global Fund partnership with the International Federation of Pharmaceutical Manufacturers and Associations on “fake medicines.” It said the effort could create confusion in consumers’ minds about generic medicines. For them, the best approach would be “strong drug regulatory agencies together with effective technology transfer.”

"The Global Fund should retain its public interest focus and disentangle the interests of public health from the interests of those who claim intellectual-property over drugs," it said. "Regressive policy suggestions and public campaigns that undermine generic competition are counter to the Fund’s public mission."

Open A.I.R.

One aspect of the Open A.I.R. project is that the fellows who have been trained over the past few years now will go out and spread the word.

Seble Baraki, legal researcher at the Justice and Legal Systems Research Institute in Addis Ababa, Ethiopia, told Intellectual Property Watch, “I go and tell people what I’ve learned and see how it is going to help” on issues like health or branding to ensure high quality products.

"By being here, I think I have brought the issue of IP in my government," she said. For instance, they have a conference on law and development with the United Nations Development Programme (UNDP), and she has consistently mentioned that they should include something on development and IP. Now, they have agreed to do it, she said.

From studying in the North (Sweden), she had a certain idea about intellectual property. "Being part of this project helped me to see how to look at how to use IP from a public interest and development perspective.

Now, she said, she plans to go home and look at how it really makes a difference in her city, to see how IP can be used. Being part of this project, she added, "changed how you think about IP."

Other Highlights

The weeklong conference was packed with speakers and activities, and involved many of the leading figures in the public interest movement related to intellectual property rights. It also involved a first-time training on traditional knowledge related to IP rights.

The death of South African leader and “father” Nelson Mandela profoundly impacted the meeting. For example, a participant from Côte d’Ivoire said he was going to “live tweet” a journey through Mandela’s whole life, traveling from country to country.

Separately, Diane Peters, general counsel at Creative Commons, suggested a focus on a positive agenda, not taking away the right of another. There are ways to structure a dialogue so that everyone’s needs are addressed, she said.

“We are all part of some ecosystem,” she said, thinking and learning from the ideas of others. Limitations and exceptions are a right, Peters said. Authors should recognise that they also are re-using others’ ideas, same for the people who re-use and remix. “I’m really happy with how the dialogue-shaping is going,” she said.

Peters also said Creative Commons takes the view that their licences are not an answer to the problems of the copyright system. (CC licences include the version used by Intellectual Property Watch allowing re-use of our content for non-commercial purposes with attribution).

[Update: Creative Commons recently issued a policy statement on copyright reform].

The Struggle for Balance

Discussions during the week showed the diversity of topics and interests in fields affected by intellectual property rights. There were few vocal champions of the IP system, but there also was no blanket condemnation of it. Rather, discussions were attempts to address specific opportunities within IP, or concerns about its effects in certain cases. Not everyone held the same view and there were some debates during the week.

But given the variety and number of advocates from different sectors, such as the access to medicines and access to knowledge movements, there were some rallying cries around certain issues.

One relatively common area was the Trans-Pacific Partnership agreement (TPP), as concerns are high about raising IP protection levels without the participation of public interest groups. A speaker asserted that the United States is using the TPP to target BRIC countries (Brazil, Russia, India, China) as it did in the negotiations for the 1994 World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

There also were a number of discussions about the meaning of “open,” in issues like open access, open education, and open source. On a related note, Sunil Abraham, executive director of the Bangalore, India-based Centre for Internet and Society, said there are different types of open standards, and that using digital signatures instead of biometrics gives a decentralised system that protects human rights.

One speaker said they had been struck during the week by the need for a South-South network. Another asked how developing countries can use IP frameworks that have been predetermined in the North and that are not appropriate.

Participants repeatedly expressed positive attitudes about such a large and high-energy gathering (which the beautiful setting did nothing to diminish), allowing endless networking opportunities. But there was an urgency about the gathering for many, as global efforts to strengthen the IP system are working against their goals.

“We are seeing an assault on pretty much every single level,” one public health advocate said at the closing session. “Even when we win” and are able to advance the cause for access to medicines, the judges have been trained by the North (meaning with a pro-IP slant) and “turn the whole thing over.”

George Washington University Prof. Susan Sell described the “forum-shifting” that occurs with forces seeking to strengthen global intellectual property rules, as they seek international organisations where they can effect change in their favour. She likened it to a “cat and mouse” situation. She also said that IP policy is not an end in itself, but is public policy.

A participant from Jordan said that country did not play “cat-and-mouse” very well as when it signed its bilateral free trade agreement with the United States it took in all the bad aspects of the US copyright law.

Another speaker said the IP system does not encourage innovation for need but rather innovation for profit. He said governments in countries with strong rights holders are “captured,” and that governments need to be recaptured. He said organisations like the Gates and Clinton foundations are promoters of strong IP protection. Developing countries, activists, need to stop being the mouse, he said, and “start becoming the dog that chases the cat.”

“How do we forum-shift to all of the spaces we can win,” another speaker asked later, “[and] push the IP maximalist agenda to where we are not always on the defensive?”

“We are seeing an assault on pretty much every single level,” said a third. “Even when we win and are able to insert an agenda for [access to medicines], the judges have been trained by the North and turn the whole thing over.”

The mood, as Sell characterised it, is that “we can never stop and congratulate ourselves too much, because it just keeps coming.”

The annual event will continue next December, this time in Kuala Lumpur.

For more details visit https://cis-india.org/news/ip-watch-january-6-2014-william-new-global-congress-on-ip-and-public-interest-adopts-principles-for-negotiations

Dictionary words in software patent guidelines puzzle industry

praskrishna — 2013-09-04T06:20:24Z

Terms not defined in draft guidelines on patents for computer-related inventions leaves room for misinterpretation

The article by C.H.Unnikrishnan was published in Livemint on August 26, 2013. The Centre for Internet and Society's work on access to knowledge is mentioned.

Could the simple Latin phrase, per se, which translates as “in itself”, lead to confusion in verifying whether a computer-related invention deserves a patent or not? Some members of the $108 billion Indian information technology industry, intellectual property (IP) law firms and anti-patent lobby groups say it can.

The inclusion of some terms that are not defined by local laws in the government’s draft guidelines on patents for computer-related inventions (CRIs) leaves room for ambiguity and misinterpretation when examiners grant or reject such a patent, they say. The guidelines were released in early August.

The terms include ‘per se’, algorithm, hardware, firmware —and CRI itself.

CRI “has not been defined in any of the Indian statutes and is construed to mean, for the purpose of these guidelines, any invention which involves the use of computers, computer networks or other programmable apparatus and includes such inventions, one or more features of which are realized wholly or partially by means of a computer programme/programmes”, the Indian Patent Office (IPO) acknowledged in the draft guidelines, and called for feedback from industry stakeholders by 8 August.

	Patent examination is the most crucial function performed by a patent office. An examiner verifies the invention claims made by an applicant by relying on scientific parameters, industrial applicability and previously known technologies, among others, to decide whether the claims are genuine and deserve a patent. IPO’s draft guidelines are aimed at helping examiners in this task. However, with new technologies, the task of granting or rejecting patents has become tougher, as acknowledged by the patent office, in its draft guidelines. The confusion is only compounded with the inclusion of dictionary terms such as per se. The Indian Patent Law does not contain any specific provision regarding the protection of computer software that includes programs, musical and artistic works, studio and video recordings, databases and preparation material and associated documents such as manuals. India does not grant pure software patents (i.e., a patent over a “computer programme per se”).

Patent examination is the most crucial function performed by a patent office. An examiner verifies the invention claims made by an applicant by relying on scientific parameters, industrial applicability and previously known technologies, among others, to decide whether the claims are genuine and deserve a patent.

IPO’s draft guidelines are aimed at helping examiners in this task. However, with new technologies, the task of granting or rejecting patents has become tougher, as acknowledged by the patent office, in its draft guidelines. The confusion is only compounded with the inclusion of dictionary terms such as per se.

The Indian Patent Law does not contain any specific provision regarding the protection of computer software that includes programs, musical and artistic works, studio and video recordings, databases and preparation material and associated documents such as manuals. India does not grant pure software patents (i.e., a patent over a “computer programme per se”).

Software, instead, is protected by the Copyright Law, similar to literary and aesthetic works.

In the feedback, a copy which was reviewed by Mint, India’s largest software services exporter Tata Consultancy Services Ltd (TCS), said it “is happy to note that IPO is taking the right steps in the direction of protecting inventions...Moving from the notion of ‘Computer Implemented Invention’ to ‘Computer Related Invention’ itself is a positive shift...”

	“Primary objective of the CRI guidelines, as expected and understood by the stakeholders, is to deliberate on the meaning of “per se” in Section 3(k) for Software Inventions with example pertaining to Software Inventions and not interpret them to be the Hardware-led inventions,” said TCS in its feedback. It added that “while examining the technical character of a CRI, mere usage of the words such as enterprise, business, business rules, supply-chain, order, sales, transactions, commerce, payment, etc. in the (patent) claims should not lead to conclusion of the CRI being just a ‘Business Method’ without any technical character. These terminologies actually qualify the contextual utility and fitment of the inventions..”

“Primary objective of the CRI guidelines, as expected and understood by the stakeholders, is to deliberate on the meaning of “per se” in Section 3(k) for Software Inventions with example pertaining to Software Inventions and not interpret them to be the Hardware-led inventions,” said TCS in its feedback.

It added that “while examining the technical character of a CRI, mere usage of the words such as enterprise, business, business rules, supply-chain, order, sales, transactions, commerce, payment, etc. in the (patent) claims should not lead to conclusion of the CRI being just a ‘Business Method’ without any technical character. These terminologies actually qualify the contextual utility and fitment of the inventions..”

According to Rajiv Kumar Choudhari, a lawyer specializing in IT patent law, a computer program is software ‘per se’ because there may be no transformation of data/signal/input, or there is no tangible benefit to the device if this software is run on the device. “The benefit to the device may be in terms of efficiency, or increase/decrease in certain attributes,” he said in a blog in SpicyIP where he analyzed software patenting position in India earlier.

In such cases, if the applicant fails to define the exact benefit to the device in a tangible manner, the examiner may refuse to grant a patent. In January 2012, for instance, the Delhi patent office rejected a software patent application filed by Netomat Inc., on grounds that it did not fulfil the requirement of Section 3(k).

According to section 3(k) of the Indian Patent Act, “a mathematical or business method or computer programs per se or algorithms” are not inventions.

Between 2006 and 2011, the latest available data, 34,967 IT patent applications were filed with the Indian patent office. It granted about 5,594 patents during the same period.

“We hope that through this consultation (feedback) the prevailing evaluation methods for computer related inventions will become more efficient and encourage the Industry to file and protect their IP. However, we have some major concerns related to the draft guidelines,” said Nassom, the country’s software lobby body.

Overall, the guidelines appear to be “restrictive and may be a hindrance to grant of patents in India, even when such rights would be granted in other countries like Europe, Japan, etc,” said Nasscom, adding that “over a period of time”, it will discourage innovative activities from being carried out in India.

For instance, Nasscom pointed out that since the patent office has not defined ‘per se’, the phrase “computer program per se” should mean a set of instructions by itself or computer program by itself. “This meaning is generally accepted even in the UK and before the EPO (European Patent Office),” it added. The software lobby body has suggested that the scope of the “per se” limitation in Section 3(k) should be changed to cover hardware features, irrespective of whether the features are novel or not.

The guidelines, said Nasscom, seem to imply that for computer program-related claims to be allowed, the software needs to be “machine specific”, which “will unfortunately exclude patent protection for any computer-implemented invention designed to be interoperable across platforms, and not specific to a machine”.

In its feedback to the patent office, the Centre for Internet and Society (CIS), an organization that works on Internet privacy-related issues, underscored the complexity that new technologies could introduce by citing the example of CRIs in the field of data storage.

The first compact disc (CD) was invented in 1982, the digital video disc (DVD) in 1995 and the flash drive in 1999.

“While each of these inventions was far superior to their predecessor, the time between each incremental innovation has drastically reduced,” CIS noted in its feedback

“If an invention can become obsolete in as little as 2 years, it would make little sense to grant monopoly rights for 20 years. So even if a CRI passes the three tests of novelty, inventive step and industrial applicability, it needs to be evaluated from the perspective of its possible obsolescence. In such a scenario, the examiner should look at the history of innovation in that particular field to ascertain that the invention does not become obsolete in a short time.”

Also consider for instance the term, “business methods”. It involves a whole gamut of activities in a commercial or industrial enterprise relating to transaction of goods or services but “the claims are at times drafted not directly as business methods but apparently with hitherto available technical features such as Internet, networks, satellites, tele-communications, etc”, the draft stated.

“The exclusions are carved out for all business methods and, therefore, if in substance the claims relate to business method even with the help of technology, they are not considered patentable,” the guidelines added.

The Japan intellectual Property Association, in its reaction to the India’s new CRI patenting guidelines, also noted that recent computers, including processors or memories, mostly do not rely on any specific programs.

“In addition, software-related inventions should be patentable originally for their functioning on the basis of novel computer programs in combination with general purpose devices. However, these computer-related inventions would be excluded from protection under the new standards for patentability,” it cautioned.

The draft guidelines “have interpreted and applied Section 3(k) of the Indian Patent Act 1970 in a more restrictive way to conclude as to what is patentable, which is a cause of concern to various stakeholders”, said Federation of Indian Chambers of Commerce and Industries (FICCI) in its reaction.

Software patents remain an emotive issue.

Their proponents argue that patents promote investment in research and development, accelerate software development by making previously unknown and not obvious software inventions public and protect IP of software companies. They also encourage the creation of software companies and jobs and increase the valuation of small companies, the proponents add.

Critics counter that traditional copyright has provided sufficient protection to facilitate massive investment in software development and that most software patents cover either trivial inventions or inventions that would have been obvious to persons of ordinary skill in the art at the time the invention was made.

Globally, patents in the IT and software sector are being revisited due to litigation and compensation claims over misuse of patents including the much-hyped patent battle of Apple Inc. with Samsung Electronics and Google Inc. with Microsoft Corp.

In June 2008, technology companies including Google, Intel Corp, Oracle Corp, Cisco and Hewlett-Packard Co. set up the ‘Allied Security Trust’ to address the risk of patent-infringement suits by buying those patents which they feel are most important to their businesses.

AST has 26 members from Europe, North America and Asia. It buys patents that its members have expressed interest from the patent holder, and the cost would be deducted from those companies’ Escrow accounts. AST argues that non-practicing entities, or NPEs, also known as patent trolls, produce no products or services of their own, and yet acquire patents—sometimes hundreds of them—with the sole intention of asserting their right and conduct patent litigation to extract settlements or licensing fees.

In 2008, AST estimated that it costs operating companies an average of $3.2 million through the end of discovery and $5.2 million through trial to defend cases in which there is more than $25 million at stake.

The costs of determining if a particular piece of software infringes any issued patents are too high and the results too are uncertain. A software patent costs, on average, around $20,000, it said.

For more details visit https://cis-india.org/news/livemint-august-26-2013-ch-unnikrishnan-dictionary-words-in-software-patent-guidelines-puzzle-industry

Beyond Property Rights: Thinking About Moral Definitions of Openness

praskrishna — 2013-08-07T09:43:35Z

It is hard for Westerners to realize just how much we take for granted about intellectual property, and in particular, how much the property owner’s perspective--be it a corporation, government or creative artist--is embedded in our view of the world as the natural order of things.

This blog post by David Eaves was published in TECH President on August 6, 2013. Sunil Abraham is quoted.

While sharing and copying technologies are disrupting some of the ways we understanding “content,” when you visit a non-Western country like India, the spectrum of choices become broader. There is less timidity wrestling with questions like: should poor farmers pay inflated prices for patented genetically-engineered seeds? How long should patents be given for life-saving medicines that cost more than many make in a year? Should Indian universities spend millions on academic journals and articles? In the United States or other rich countries we may weigh both sides of these questions--the rights of the owner vs. the moral rights of the user--but there’s no question people elsewhere, such as in India, weigh them different given the questions of life and death or of poverty and development.

Consequently, conversations about open knowledge outside the supposedly settled lands of the “rich” often stretch beyond permission-based “fair use” and “creative commons” approaches. There is a desire to explore potential moral rights to use “content” in addition to just property rights that may be granted under statutes.

A couple of months ago I sat down in Bangalore with Sunil Abraham, the founder and executive director of the Center for Internet & Society (CIS) there, to talk about the center, and his views on the role of technology and openness in politics and society. One part of our conversation led to this WeGov column on “I Paid a Bribe” and the challenge of fighting corruption in India using technology. Here I want to reflect further on how Sunil and his counterparts may be radically challenging how we should think about open information more generally.

As we talked, Sunil outlined how people and organizations were using “open” methodologies to advance social movements or create counter power. To explain his view he sketched out the following “map” of IP rights and freedoms to show people use and view the different “permissions” (some legal, some illegal).

As a high-level overview this map offers a general list of the tools at the disposal of citizens interested in playing with intellectual property, particularly as they pursue social justice issues.

At the top of the chart are the various forms of “permissions” that a property owner may (or may not) grant you. Thus at the far left sits the most restrictive IP regime and, as you move right, the user gets more and more freedoms (or, if you take the perspective of property owners, property loses more and more of its formal legal protections and a different notion, of “moral rights,” arises).

The second row divides the permissions and the actors along what Sunil believes is one of the most important permissions - the requirement to attribute (or the freedom not to).

Finally, at the bottom, I’ve placed various actors along the spectrum to both show where they might be positioned in the access debate and/or how they use these tools to advance their aims. Thus someone like Lawrence Lessig, the intellectual father of Creative Commons, might support many uses of information as long as the owner gives permission; whereas groups like the Pirate Party or the Yes Men edge further out into uses that may not appear legitimate to a property owner.

Particularly interesting is Sunil’s decision to include non-legal “permissions” such as ignoring the property holders rights in his spectrum of openness. He sees this as the position of the Pirate Party, which he suggests advocates that people should have the right to do what they want with intellectual property even if they don’t have permission, with the exception, interestingly, of ignoring attribution.

He also includes two even more radical “permissions” – counterfeiting, that is claiming that you created the work – and false attribution – assigning your work to someone else! Sunil sees Anonymous as often using the former and the Yes Men as using the latter. “They (the Yes Men) are playing with the attribution layer,” he says, by conducting actions such as their fake DOW press release about the Bhopal disaster.

Pushing the identity envelope
To Sunil, the big dividing line is less about legal vs. illegal but around this issue of attribution. “This is the most exciting area because this (the non-attribution area) is where you escape surveillance,” he declares.

“All the modern day regulation over IP is trying to pin an individual against their actions and then trying to attach responsibility so as to prosecute them,” Sunil says. “All that is circumvented when you play with the attribution layer.”

This matters a great deal for individuals and organizations trying to create counter power – particularly against the state or large corporate interests. In this regard Sunil is actually linking the tools (or permissions) along the open spectrum to civil disobedience. Of course, such “permissions” are also used by states all the time, such as pretending that a covert action was the responsibility of someone else, or simply denying responsibility for some action.

This, in turn, has some interesting implications.

The first is, that it allows Sunil to weave together a number of groups that might not normally be seen as connected because he can map their strategies or tools against a common axis. Thus Lawrence Lessig, the Yes Man, companies and journalists can all be organized based on what “permissions” they believe are legitimate. For example, journalists and new publishers are often seen as fairly pro-copyright (it protects their work) but they are quite happy to ignore the proprietary rights of a government or corporate document and publish its contents, if they believe that action is in the public interest. Hence their position on the spectrum as “willing to ignore proprietary rights.” (Leave aside government arguments that publishing such documents is “stealing” when, at least in the US, they are technically already not subject to copyright.) However, a credible newspaper or journalist would never knowingly attribute a quote or document to a different person. Attribution remains sacred, even when legal proprietary rights are not.

It also tests the notions of who is actually an IP radical. As Sunil notes: “The more you move to the right the more radical you are. Because everywhere on the left you actually have to educate people about the law, which is currently unfair to the user, before you even introduce them to the alternatives. You aren’t even challenging the injustice in the law! On the right you are operating at a level that is liberated from identity and accountability. You are hacking identity.”

Sunil is thus justifying how the use of “illegal” permissions may actually be a form of civil disobedience that can be recognized as legitimate. This is something journalists confront regularly as well. Many are willing to publish “illegally” obtained leaked documents when they believe that may serve the public good. What is ethical is not always legal and so there position on this chart is more nuanced than one might initially suspect.

This is not to say that Sunil doesn’t believe in the effectiveness of legal approaches. For him this map represents a more complete range of choices an activist can choose from as they try to develop their strategy.

“So what you do, and the specific change you are trying to precipitate, you’ll have to determine what strategy you need. Sometimes working within the left hand group is sufficient. Having a non-derivative, non-commercial license to enable students to access academic works, in India, is good enough… But then, to do what the Yes Men did to DOW Chemicals? You have to be over on the right side.”

For more details visit https://cis-india.org/news/tech-president-august-6-2013-david-eaves-beyond-property-rights-thinking-about-moral-definitions-openness

Do You Have the Right to Unlock Your Smart Phone?

puneeth — 2013-08-07T07:32:52Z

In this blog post Puneeth Nagaraj looks at the recent controversy over the expiration of the exemption granted by the US Library of Congress for unlocking phones and compares the Indian position as per a 2005 Andhra Pradesh High Court judgment.

Being a gadget freak in India is difficult. Smartphone companies take months to release their latest product in India (if they do at all) and even when they are released, they are overpriced. For instance, Google's offering in the entry level tablet market, the Nexus 7 was released in India only in April — a full 9 months after its US debut. It is priced at Rs. 16,000 (USD 300) while it costs only USD 200 in the US. Google’s other device Nexus 10 is yet to make its way to the Indian market.

For long, the Indian gadget freak has relied on friends or family travelling abroad to get his/her hands on the latest gadgets on offer. It was not uncommon in the days following the release of the earlier models of the iPhone for eager owners of foreign bought phones to unlock or “jailbreak” their phones so they could use it in India. But the practice of “jailbreaking” or “android rooting” (hereinafter referred to as unlocking [*] for convenience) phones serves a wider purpose. Unlocking smart phones allows users to overcome limitations imposed by hardware manufacturers or carriers. As a result, users can freely switch service providers. While some manufacturers (like Apple) strongly oppose unlocking- even threatening to cancel warranty in case of unlocked devices, others do not mind it and some (like Google and HTC) even encourage it.

US Library of Congress Exemption

The whole controversy surrounding the legality of unlocking phones started in the US last October when the Library of Congress decided against renewing a copyright exemption it granted in 2006. As a result, the exemption expired in January and caused a furore in the US. The DMCA (1201 of the USC), prohibits circumvention of technological measures that protect access to a copyrighted work. This sort of protection is necessary to protecting copyrighted works in a digital format. But the US Congress was informed of the restrictive effects of such a prohibition. Consequently, the Congress created statutory exemptions to allow circumvention of these technological measures and empowered the Library of Congress to grant or renew such exemptions.

Despite the exemption granted by the Library of Congress in 2006, many phone companies successfully sued hardware providers who enabled unlocking of phones. With the expiration of the exemption in January, the status of phone unlocking hangs in a balance. This is especially troublesome as it is a widespread and in some cases essential practice. Both the White House and the FCC have been petitioned to legalise unlocking. In response, four different proposals have been tabled in the US Congress just for this purpose (here is an analysis of each of the bills).

At the moment, the unlocking of phones to run unapproved software is still legal as a result of an exemption granted in 2012. But this is also up for review in 2015. There is a need for a more comprehensive solution to address both these issues and the proposals before the Congress fall short.

Indian Position

Syed Asifuddin v. State of Andhra Pradesh
A case based on the unlocking of phones came before the Andhra Pradesh High Court in 2005. Certain Employees of TATA Indicom had facilitated the migration of customers contracted to Reliance for 3 years by unlocking their phones. Representatives of Reliance filed a criminal complaint against them alleging criminal breach of trust (IPC Section 409), cheating (IPC Section 420) and criminal conspiracy (IPC Section 120). They also claimed the violation of copyright and sought punishment under Section 63 of the Copyright Act, as well as Section 65 of the IT Act.

The court dismissed the criminal petitions under the IPC, IT Act and the Copyright Act. However, on the question of copyright infringement, the court held that if a person alters computer programme of another person or another computer company, the same would be infringement of copyright. The court also found that a cell phone would fall under the definition of a computer under Section 2(1) (i) of the Information Technology Act. Consequently, the court held that Section 65 of the IT Act, which deals with the tampering of computer source documents, would be applicable to the present case. The decision itself may not have precedent value on the issue as the High Court was merely ruling on the admissibility of the case on the basis of the above provisions and sent the matter back to the trial court to decide based on the evidence available. But the opinion of the court on copyright infringement and the IT Act is troubling.

Criticism

First, the court used the rather expansive definition of computers in the IT Act (Section 2(1) (i)) to include mobile phones as well. The definition under the above section reads as under:

any electronic, magnetic, optical or other high speed data processing device or system which performs logical, arithmetic and memory functions by manipulations of electronic, magnetic or optical impulses, and includes all input, output, processing, storage, computer software or communication facilities which are connected or related to the computer in a computer system or computer network.

It would not be unreasonable to see smartphones as being capable of “high speed data processing” or “input, output, processing, storage”. However, the phones in question here were basic Samsung N191 and LG-2030 phones (images of these phones can be seen here and here). Even if it might be conceivable that such basic phones can be put in the same bracket as desktop computers or laptops, the court had to examine the definition in the context of the substantial provision. In this case, the substantial provisions were Section 65 and 66 of the IT Act, which deal with tampering source documents and hacking computer systems respectively. So, by equating a basic mobile phone to a computer, the court equated unlocking a mobile phone to hacking a computer. This problem is exacerbated by the fact that Section 66 prescribes criminal punishment to hackers.

Second, the court also erred in its ruling on the Copyright Act. Once again, the court held a basic phone to mean a computer under Section 2(ffb). More worryingly, it was held that the Electronic Serial Number (ESN), a unique code given to every phone would qualify as a computer program under Section 2(ffc) and is thus subject to copyright under Section 14 of the Copyright Act. In doing so, the court has set the bar extremely low for copyrightablity of computer programs. Needless to say this judgment needs to be reconsidered if not watered down. While there is recognition that bootloader protection programmes barely meet the standard for copyright, the Andhra Pradesh High Court has granted protection to a randomly generated 11 digit number.

Fortunately, the case of Syed Asifuddin was not a final ruling on the issue as the court sent the matter back to the trial court. However, there is every chance that a future court can rely on the erroneous reasoning in this case. Further, fair use arguments can always be mad in the favour of an individual consumer who wishes to migrate to another service provider.

The larger problem is that by giving an expansive meaning to the provisions in the Copyright Act and the IT Act, it can be used to target businesses that facilitate unlocking devices that can be targeted (like in the US). Unlike in the US, phone unlocking is not a business in India and is usually done by small business owners who sell and repair mobiles. The consequences of suing such businesses can be worse in India as they can end up in jail for an act that falls in an undefined area of the law. It seems that the situation may be resolved in the US in the near future in favour of the consumer — although the issue of the business of unlocking phones must be resolved finally. The position in India is worrisome especially due to the threat of criminal persecution.

[*]. The term jailbreaking is used specifically in the case of iOS devices and android rooting, as the name suggests is used in the case of android devices. Technically speaking, they are very different given that most android devices do not restrict access to their “bootloaders”. Acknowledging the difference between the two, the discussion here is focused on overriding technological measures meant to protect underlying copyrighted works.

For more details visit https://cis-india.org/a2k/blogs/do-you-have-right-to-unlock-your-smart-phone

The ASSOCHAM International Conference on the "Interface between Intellectual Property and Competition Law"

nehaa — 2013-07-22T05:54:01Z

An international conference on interface between intellectual property and competition law was organized by ASSOCHAM on July 12, 2013 in New Delhi. In this post, Nehaa Chaudhari shares select notes from the conference.

All views expressed are only of the participants and cannot be taken to be those of any organization or the like that they may represent.

D.S. RAWAT- SECRETARY GENERAL- ASSOCHAM- WELCOME ADDRESS

IPR and competition laws in conflict or have provisions (in existing law) that already take care of this possible conflict?
What happens if an IP right holder acquires a ‘dominant position’ by virtue of these rights?
- Abuse of dominant position provisions get attracted if rights are beyond the boundaries of IPRs.
Anti-competitive agreements (and beyond the objective of preventing infringement)- then what happens?

V. LAKSHMI KUMARAN- MANAGING PARTNER, LAKSHMI KUMARAN AND SRIDHARAN- THEME ADDRESS

Trans-border transactions are normally of two types:
(a) trade (in goods and services) - WTO mandate is free trade of goods and services between nations;
(b) investment.
“Free” trade should also be “fair” trade.
Competition law will not question the grant of the IP rights. It will question how you use them, especially when/if you use in a way that is detrimental to competition.
Patent law places many restrictions on what you can and cannot do- these ‘can’t do actions’- if you perform them, you will be scrutinized under competition law.
Cases in US/Europe- challenging patents were withdrawn by ‘compromise’ but agreements really spoke of ‘something more’ promised by the patent holder if the challenging suit was withdrawn- scrutinized by competition law.

NUNO PIRES DE CARVALHO- DIRECTOR, IP AND COMPETITION POLICY DIVISION, WIPO, GENEVA- SPECIAL ADDRESS (nuno.carvalho@wipo.int)

2007- Agenda for Development at WIPO- Committee on Development and IP (CDIP) to supervise implementation of the AD and coordinate with other Committees.
WIPO- as of now, member states do not want to embark on negotiating processes on IP and Competition but rather want to better understand it.
WIPO- 2011-2012- Project on IP and Competition Law.
WIPO Goal- to establish WIPO as a global forum on IP and Competition policy.
Rationale (WIPO)- same as the 3 DA (2007) recommendations.

CHAITANYA PRASAD- IAS, CONTROLLER GENERAL OF PATENTS, DESIGNS AND TRADEMARKS- KEYNOTE ADDRESS

Monopoly- genesis of both IP and Competition Law (IPRs= regulated monopoly= not bad- IPRs= carefully granted essential monopolies regulated by State).
Competition Law and IP have common goals- better technology etc., and also economic growth and better quality of life for consumers.
IPRs- (a) industrial IPRs- GIs, patents, TMs, IDs, etc and (b) non industrial IPRs- copyright and related rights.
Patent Law- grant of Compulsory licences in some situations- Doctrine of Exhaustion of IPRs- domestic or international?- international committee divided on this.
READ- Adams v. Burke- 1873 SCOTUS.
DB- Delhi HC- parallel imports- allowed under Trademark Law?
New York Times- 06/06/13- generic drug market v. patent holder- anti competitive markets- SCOTUS decision.

Standards- especially in communication networks- generally have higher royalties- disclose existence of IPRs and agree to license at reasonable rates- REQUIREMENT.
IP Law- in built mechanisms to address abuse and these are furthered by competition law.
IP + CL- hand in hand for welfare of market and growth of economy.

ASHOK CHAWLA- CHAIRPERSON, CCI- INAUGURAL ADDRESS

“Very rightly” WIPO is not seeking to harmonize regime across nations- this has to be a domestic process of laws/jurisprudence.
Similarities/intersection of IP and competition law:
- IP + competition law- both put a premium on innovation – IP does this directly and competition law because there is a need to do better than other firms.
- Lead to technical and economic innovation.
- Goals – greater good for consumer and society.
Merger Control- crystal gazing on post merger scenario is required. Competition law authorities required to take nuanced approach in fast growing and tech. sectors- ex ante analysis- need to be upfront to scrutinize kind of restrictions being imposed under the deal- need to balance protection of knowledge of the mind with protecting the interests of the stakeholders as well.- this is the CCI approach.

The aforesaid balancing act is also going to be a critical area over the next twenty years- especially for policy makers.
Wider dissemination of advocacy is required.
Question to Chawla- ‘pay for delay’ agreements/reverses payments- our generic companies (what happens to them?)- what happens to the consumers? Is there going to be a study on this by the CCI?- Chawla said that in the generic drugs sector we are already strong- he said that this is going to be an issue Indian manufacturers will have to grapple with eventually (internationally)- but we will take care when it comes here.- Carvalho intervened and pointed out that ‘pay for delay’ agreements and reverse payments were different things.
Question to Chawla- IPR section on the CCI website does not have any content anymore- Chawla said that they will rectify this and understand that the section would be very useful in terms of clarifying the CCI’s stance on this intersection between Competition Law and IPRs.

Technical Session 1- “Balancing IPRs against Fare Practice”- Moderator- Hitesh S. Barot- Senior Intellectual Property Counsel, GE India.
NUNO PIRES DE CARVALHO- DIRECTOR, IP AND COMPETITION POLICY DIVISION, WIPO, GENEVA- THE INTERFACE BETWEEN IP/COMPETITION IN WIPO DEVELOPMENT AGENDA (nuno.carvalho@wipo.int)

Balanced IP- the Foundation of economic democracy.
Trade name- reputation- basis for survival in the market. Trade secret- sets you apart from competitors- IP not all about reputation- IP protects and promotes intangible differences that businesses introduce in their products/services- that is, differentiation. This could be of origin, quality, invention, creation, location, reputation, price etc. this differentiation is behind every IP asset.
What is balanced IP?
- IP in the right dosage- (not too much- examples of too much- IP for unmodified genes/functional signs/or common terms as trademarks.)- (not too little- example of too little- lack of protection for sound/smell designs, tolerance for counterfeit goods and piracy, no protection for new and inventive traditional knowledge etc).
- IP that is not abused.
- IP that is not distorted by external circumstances- regulation distorts competition and therefore distorts IP. Since IP is about differentiation, before innovation it promotes social, cultural and economic freedom. IP is the foundation of any free market economy based on consumers’ and entrepreneurs’ freedom.

PARTHASARATHY R., SENIOR PARTNER, LAKSHMI KUMARAN AND SRIDHARAN- THE INTERFACE BETWEEN IP/COMPETITION IN THE PHARMACEUTICAL SECTOR (partha@lakshmisri.com)

Patents Act- Section 140- certain prohibitions.
Section 107A of the Patents Act appears to provide for international exhaustion.- Delhi HC (2012)- Kapil Wadhwa v. Samsung International extended international exhaustion to trademarks also.
Areas of concern- ‘pay for delay’ agreements- will Section 3(5) of the Competition Act apply?
US- a granted patent is presumed to be valid. India does not envisage such a framework.
Getting a patent and getting the right to practice a patent are very different in patent law.
Acquiring patents by fraud attracts section 4 of the Competition Act.
Unfair pricing- not an offence to have excessive pricing in the US.
Standards- when you develop patents here, you AGREE to compulsory license on a FRAND basis. Only issue then is what are FRAND terms- won’t get injunctions on this issue here in India, since you can prove damages are enough of a remedy- so it all comes down to negotiations.

MIHIR RALE- AVP- LEGAL AND REGULATORY, STAR INDIA PRIVATE LIMITED - THE INTERFACE BETWEEN IP AND COMPETITION LAW IN THE BROADCASTING SECTOR

Overregulation leads to lack of innovation- this is his conclusion.
Content costs rise constantly- recouping them is very hard since channel prices have remained static for about eleven years now- supposed to have been an interim measure by the SC but TRAI is allowing it to continue.
Question by Barot- who decides how to price is going to be something interesting to debate.
(Sort of answering the ,above> question)- Mandatory Sharing Act- share feed w/ Prasar Bharathi- feed here refers to sporting events of national importance- the purpose is to give access to those who have terrestrial network (not cable/DTH)- but provision in the Cable Act says operators HAVE to carry two DD channels- so.. now operators don’t want to carry other (sports) channels, since Team India is available on DD anyway.

HEMANT KUMAR- GROUP GENERAL COUNSEL, ESSAR GROUP- ANTI COMPETITION AND IPR- DIFFERENT MEANS TO THE SAME END?

Can of course recover costs of innovation- (under IP license agreements)- but only up to a reasonable limit.

SANJEEV GEMAWAT- SENIOR VICE PRESIDENT- LEGAL AND SECRETARIAL, DLF RENTCO GROUP- IPR AND COMPETITION LAW- INDUSTRY PERSPECTIVE

The challenge is not competition, but protecting IPRs, given the size of the economy.
How will authorities interpret limits= challenges?
Challenge- threshold limits under Section 5 of the Competition Act- considering size of the economy.
Barot’s comment- soft convergence is emerging as a solution.

Technical Session 2- “Innovation and Competition”- Moderator- Geeta Gouri- Member, Competition Commission of India
BALAZS GARGYA- FIRST SECRETARY, EUROPEAN UNION DELEGATION TO INDIA – INNOVATION AND IPR

Indo EU FTA
- Agreement will recognize India’s access to medicines policies.
- Both sides have shown flexibility.
- All our flexibilities will be untouched.
- Right to compulsory licenses maintained and recognised.
- Agreement not going beyond existing obligations.

J.L.N. MURTHY- GENERAL COUNSEL- ASIA PACIFIC, RED BULL- RECENT CHANGES ON MADRID PROTOCOL

Anand Sharma recently deposited the instrument of India’s accession to the Madrid Protocol.

This is w.e.f. 08/07/2013 in India.

Accession strengthens march towards excellence in IP recognition.

MUNESH MAHTANI- GLOBAL COMPETITION COUNSEL, GOOGLE, U.K.- COMPETITION LAW ENFORCEMENT IN THE HIGH-TECH SECTOR

Challenges for competition authorities:
- Defining markets and assessing market power- increasing market shares may not indicate market power (e.g.- Microsoft/skype)- need to look at actual competitive dynamics.
- Identify abusive conduct.
- Important to distinguish between harm to competitors and harm to consumers.
Existing antitrust laws can deal with high tech. sectors.

MANAS KUMAR CHAUDHURI- CO-CHAIRPERSON, ASSOCHAM NATIONAL COUNCIL FOR COMPETITION LAW AND PARTNER, KHAITAN AND CO., MONOPOLISTIC BEHAVIOURS IN HORIZONTAL AGREEMENTS AND VERTICAL AGREEMENTS

Monopolistic behaviours in horizontal agreements and vertical agreements.
GI agreements- falling foul of Competition Law?
Assignment agreements- terms anti competitive (if any)- then principle of severability of contract will apply.
Function of patents- to reward innovative work of inventor and NOT to protect public from defects. (ECJ decision 15/74).
The beginning of competition law assessment lies where IPR enters the market.

SAMIR GANDHI- PARTNER, AZB & PARTNERS, RELATIONSHIP BETWEEN IPR, MONOPOLIES AND DOMINANCE

IPR and Competition Law are two sides of a coin aimed at furthering innovation.

Under Section 4 of the Competition Act, 2002, you cannot take the defence of “doing so to protect my IPRs’ stance for your actions.

CCI has not yet had an IPR+ competition law ‘meaty’ case yet.

Refusal to license IPRs- competition law cannot say that you HAVE to license, but MAY be construed as anti-competitive if not backed up by sound objective claims.

At what stage are you required to license?

For more details visit https://cis-india.org/a2k/blogs/the-assocham-international-conference-on-the-interface-between-intellectual-property-and-competition-law

WIPO reaches agreement on treaty for blind

praskrishna — 2013-07-01T09:59:29Z

Officials at the World Intellectual Property Organisation have reached an agreement to provide wider access to books for the visually impaired in different countries, a long-pending demand of the World Blind Union and activist groups.

The article by Pankaj Mishra was published in Livemint on June 26, 2013. Sunil Abraham is quoted.

If officially approved, the treaty will help distribution of specially formatted books for the blind and visually impaired in different countries by removing copyright law hurdles. For instance, US-based Bookshare, which is an online library for people with sight disabilities, has about 200,000 books in its collection, but only about 75,000 of them can be distributed in the UK because of copyright restrictions.

According to the Intellectual Property Watch website that track international policy on the subject, the agreement was reached over the weekend in Marrakesh, Morocco, where a conference to facilitate access to published books for people with sight disabilities is being held.

“The text, which has not been presented to the conference plenary, nor adopted yet, also addresses the issue known as ‘the Berne gap’, which refers to countries which are not part of international treaties governing copyright, such as the Berne Convention for the Protection of Literary and Artistic Works, the World Trade Organization Agreement on Trade-Related Intellectual Property Rights (TRIPS), and the WIPO Copyright Treaty,” the website said in a report on 24 June.

According to the World Health Organisation (WHO), India has 63 million visually impaired people, of whom about 8 million are blind.

Experts such as Sunil Abraham of the Centre for Internet and Society said Indian negotiators played a crucial role in pushing for these amendments.

“India’s copyright law after the latest amendment has a very robust exception for the disabled. It is disability neutral and works neutral. We must applaud the Indian negotiators for exporting Indian best practice to global copyright policy. India continues to be a leader in WIPO when it comes to protecting the public interest and facilitating access to knowledge,” said Abraham.

The treaty, which promotes sharing the books in any format for the blind or visually impaired, is expected to alleviate the “book famine” experienced by many of the WHO-estimated 300 million people suffering from such disability in the world, Intellectual Property Watch said.

“The treaty however is both disability specific, i.e. the visually impaired, and works specific, mostly targeted at ending the book famine,” Abraham said.

For more details visit https://cis-india.org/news/livemint-pankaj-mishra-june-26-2013-wipo-reaches-agreement-on-treaty-for-blind

‘Miracle at Marrakesh’ to help visually impaired read

praskrishna — 2013-07-02T10:07:28Z

The treaty will make access to books for the visually impaired, blind and print disabled easier.

The article by Ramya Kannan was published in the Hindu on June 30, 2013. Pranesh Prakash is quoted.

On Friday, in the same city that established the World Trade Organisation nearly two decades ago, another significant treaty was born. In Marrakesh, Morocco, international negotiators signed a treaty that will make access to books for the visually impaired, blind and print disabled easier.

After a week of intense debate among the negotiators (facilitated by the World Intellectual Property Organisation), the Marrakesh Treaty to Facilitate Access to Published Works for Persons who are Blind, Visually Impaired, or otherwise Print Disabled emerged.

It will address the ‘book famine’ for the visually impaired by “requiring its contracting parties to adopt national law provisions that permit the reproduction, distribution and making available of published works in accessible formats through limitations and exceptions to the rights of copyright right holders.” Very simply, it allows the waiver of copyright restrictions in order for books to be available in formats such as formats such as Braille, large print text and audio books.

Pranesh Prakash of the Centre for Internet and Society, in his closing remarks said: “It is historic that today WIPO and its members have collectively recognised in a treaty that copyright isn't just an ‘engine of free expression’ but can pose a significant barrier to access to knowledge.”

To recognise that copyright should not frustrate access for some groups of people and thereby to free books from that ‘constraint’ is of immeasurable significance for people otherwise unable to access books in the conventional format.

The treaty also provides assurances to authors and publishers that that system will not expose their published works to misuse or distribution to anyone other than the intended beneficiaries. “There are no winners and no losers, this is a treaty for everyone,” said Moroccan Minister of Communications Mustapha Khalfi, going on to describe it as the “Miracle in Marrakesh.”

There are an estimated 285 million blind and partially-sighted people in the world, of which the largest percentage lives in India. Only 1 to 7 per cent of all books published are available in formats accessible to them. India’s key campaigner for the treaty, the late Rahul Cherian of Inclusive Planet was full of beans when he spoke to The Hindu in December last year, anticipating the possibility of a treaty half a year later.

“It is a breakthrough!” he said excitedly as he broke the news, “The Extraordinary General Assembly of the World Intellectual Property Organisation has referred the Treaty for Visually Impaired Persons to a diplomatic conference in June of 2013.”

For more details visit https://cis-india.org/news/the-hindu-ramya-kannan-june-30-2013-miracle-at-marrakesh-to-help-visually-impaired-read

CIS's Closing Statement at Marrakesh on the Treaty for the Blind

pranesh — 2013-07-03T12:01:25Z

Pranesh Prakash read out an abridged version of this statement as his closing remarks in Marrakesh, where the WIPO Treaty for the Blind (the "Marrakesh Treaty") has been successfully concluded. The Marrakesh Treaty aims to facilitate access to published works by blind persons, persons with visual impairment, and other print disabled persons, by requiring mandatory exceptions in copyright law to enable conversions of books into accessible formats, and by enabling cross-border transfer of accessible format books.

Thank you, Mr. President.

I am truly humbled to be here today representing the Centre for Internet and Society, an Indian civil society organization. If I may assume the privilege of speaking on behalf of my blind colleagues at CIS who led much of our work on this treaty, and the many blindness organizations we have been working with over the past five years who haven't the means of being here today, I would like to thank you and all the delegates here for this important achievement. And especially, I would like to thank the World Blind Union and Knowledge Ecology International who renewed focus on this issue more than 2 decades after WIPO and UNESCO first called attention to this problem and created a "Working Group on Access by the Visually and Auditory Handicapped to Material Reproducing Works Produced by Copyright".

While doing so, I would like to remember my friend Rahul Cherian — a young, physically impaired lawyer from India — who co-founded Inclusive Planet, was a fellow with the Centre for Internet and Society, and was a legal adviser to the World Blind Union. He worked hard on this treaty for many years, but very unfortunately did not live long enough to see it becoming a reality. His presence here is missed, but I would like to think that by concluding this treaty, all the distinguished delegations here managed to honour his memory and work.

I am grateful to all the distinguished delegations here for successfully concluding a reasonably workable treaty, but especially those — such as Brazil, India, Ecuador, Nigeria, Uruguay, Egypt, South Africa, Switzerland, and numerous others — who realized they were negotiating with blind people's lives, and regarded this treaty as a means of ensuring basic human rights and dignity of the visually impaired and the print disabled, instead of regarding it merely as "copyright flexibility" to be first denied and then grudgingly conceded. The current imbalance in terms of global royalty flows and in terms of the bargaining strength of richer countries within WIPO — many of who strongly opposed the access this treaty seeks to facilitate right till the very end — is for me a stark reminder of colonialism, and I see the conclusion of this treaty as a tiny victory against it.

It is historic that today WIPO and its members have collectively recognized in a treaty that copyright isn't just an "engine of free expression" but can pose a significant barrier to access to knowledge. Today we recognize that blind writers are currently curtailed more by copyright law than protected by it. Today we recognize that copyright not only may be curtailed in some circumstances, but that it must be curtailed in some circumstances, even beyond the few that have been listed in the Berne Convention. One of the original framers of the Berne Convention, Swiss jurist and president, Numa Droz, recognized this in 1884 when he emphasized that "limits to absolute protection are rightly set by the public interest". And as Debabrata Saha, India's delegate to WIPO during the adoption of the WIPO Development Agenda noted, "intellectual property rights have to be viewed not as a self contained and distinct domain, but rather as an effective policy instrument for wide ranging socio-economic and technological development. The primary objective of this instrument is to maximize public welfare."

When copyright doesn't serve public welfare, states must intervene, and the law must change to promote human rights, the freedom of expression and to receive and impart information, and to protect authors and consumers. Importantly, markets alone cannot be relied upon to achieve a just allocation of informational resources, as we have seen clearly from the book famine that the blind are experiencing. Marrakesh was the city in which, as Debabrata Saha noted, "the damage [of] TRIPS [was] wrought on developing countries". Now it has redeemed itself through this treaty.

This treaty is an important step in recognizing that exceptions and limitations are as important a part of the international copyright acquis as the granting of rights to copyright holders. This is an important step towards fulfilling the WIPO Development Agenda. This is an important step towards fulfilling the UN Convention on the Rights of Persons with Disabilities. This is an important step towards fulfilling Article 27 of the Universal Declaration of Human Rights, Article 15 of the International Covenant on Economic Social and Cultural Rights and Article 30 of the UN Convention on Persons with Disabilities, all of which affirm the right of everyone — including the differently-abled — to take part in cultural life of the community.

While this treaty is an important part of overcoming the book famine that the blind have faced, the fact remains that there is far more that needs to be done to bridge the access gap faced by persons with disabilities, including the print disabled.

We need to ensure that globally we tackle societal and economic discrimination against the print disabled, as does the important issue of their education. This treaty is a small but important cog in a much larger wheel through which we hope to achieve justice and equity. And finally, blind people can stop being forced to wear an eye-patch and being pirates to get access to the right to read.

I also thank the WIPO Secretariat, Director General Francis Gurry, Ambassador Trevor Clark, Michelle Woods, and the WIPO staff for pushing transparency and inclusiveness of civil society organizations in these deliberations, in stark contrast to the way many bilateral and plurilateral treaties such as Anti-Counterfeiting Trade Agreement, the India-EU Free Trade Agreement, and the Trans-Pacific Partnership Agreement have been, and are being, conducted. I hope we see even more transparency, and especially non-governmental participation in this area in the future.

I call upon all countries, and especially book-exporting countries like the USA, UK, France, Portugal, and Spain to ratify this treaty immediately, and would encourage various rightholders organizations, and the MPAA who have in the past campaigned against this treaty and now welcome this treaty, to show their support for it by publicly working to get all countries to ratify this treaty and letting us all know about it.

I congratulate you all for the "Miracle of Marrakesh", which shows, as my late colleague Rahul Cherian said, "when people are demanding their basic rights, no power in the world is strong enough to stop them getting what they want".

For more details visit https://cis-india.org/a2k/blogs/cis-closing-statement-marrakesh-treaty-for-the-blind

Letter for Establishment of Patent Pool for Low-cost Access Devices through Compulsory Licenses

nehaa — 2013-06-27T08:06:50Z

On June 27, 2013, CIS sent a letter for establishment of a patent pool for low cost access devices through compulsory licenses.

M. Mangapati Pallam Raju
Minister for Human Resource Development
Shastri Bhavan
New Delhi 110 001

27 June 2013

Dear Dr. Pallam Raju,

Subject: Establishment of a Patent Pool for Low-Cost Access Devices through Compulsory Licences

We at the Centre for Internet and Society would like to commend you for the progressive stand you have adopted that while the government is committed to low-cost access devices, students should be able to decide “on which device, whether it is a mobile phone or iPad or Aakash or regular com-puter, they access the content”. It is imperative, though, that low-cost access devices (LCAD) be available to students, and thus the Mehta Committee report rightly acknowledges the importance of the Aakash project as central to the National Mission on Education through Information and Com-munications Technology (NMEICT). We propose a solution that would ensure both easy access to affordable devices for students to enable the NMEICT mission, as well as ensure that the MHRD focus more on educational content than devices.

We would urge you to enable access to LCADs by establishing a patent pool of essential technolo-gies (the ‘Aakash patent pool’) through the issue of compulsory licences. There are, at present in-ternationally, thousands of granted patents and tens of thousands of other intellectual property claims in respect of mobile and tablet technologies. The multiplicity of claims and cross-claims makes it impossible to manufacture, without exposure to adverse claims, generic and affordable tab-let devices. As you know, the assertion of multiple adverse and competing intellectual property claims is one of the main reasons that the Aakash tablet project is stalled. Already the multi-billion dollar patent wars in the US and Europe between Apple, Samsung, and other device manufacturers, are coming to India with Ericsson suing Micromax, India’s second-largest seller of phones and tab-lets, for Rs. 100 crore just a few weeks ago.

The establishment of a patent pool of essential technologies will redress this imminent failure and will enable the manufacturing of affordable tablet devices in compliance with the NMEICT. To es-tablish such a patent pool, the current patents applicable to mobile and tablet devices must be com-pulsorily licensed to a common pool and manufacturers who wish to sell their devices at an afford-able price would be allowed, at uniform terms and conditions, to utlise these patented technologies. This will simultaneously ensure that all patent-holders will benefit from royalty payments and that all manufacturers will gain access to the requisite patented technologies in a fair manner without adverse claims. The manufacturers who benefit from the pool could be required to give the Indian government credit by displaying the Aakash logo on their devices.

In order to establish such a patent pool, it is necessary to, firstly, identify the relevant technologies, and all patent-holders of such technologies, and secondly, compulsorily licence the patents in re-spect of the identified relevant technologies to the patent pool for fair and uniform consideration. Once the patent pool is established, rules may be issued to govern access to the pooled patents, regulate the manufacturing process and prevent misuse. The Patent Act, 1970 contains provisions to permit compulsory licensing of patents by the Controller of Patents on an application made in this behalf. Section 84(1)(b) read with section 84(4) of the Patents Act, 1970 enables the issue of a com-pulsory licence in respect of a patented invention if it “is not available to the public at a reasonably affordable price”.[1]

The establishment of a patent pool will directly promote public interest by advancing and deepening education in India and will also facilitate the realisation of the NMEICT.[2]

Establishing a patent pool for tablet technologies will also stimulate manufacturing in the informa-tion technology and electronics sectors in India. The National Manufacturing Policy, 2011 identifies information technology hardware and electronics and telecommunication equipment as industries of strategic significance that demand special encouragement. The Policy calls for “sector-specific pol-icy interventions” in special focus sectors where India enjoys the benefit of cost competitiveness. It is possible that, if implemented, the patent pool and the Aakash project will become global symbols of India's technological ability. While the farsightedness of the Indian Patent Act and policymakers has resulted in India becoming the “pharmacy of the world”, similar farsightedness may now result in India becoming the “electronics hub of the world”.

Forming such a patent pool for affordable access devices will prove to be a huge opportunity for education, and the credit for that would go to the Indian government and to the MHRD in particular. Further, some of the most important patent pools of the past have only come into existence after government intervention, such as the avionics patent pool proposed by the Secretary of the U.S. Navy during World War I and the radio patent pool, also created as a result of intervention by the U.S. Government. For these and other reasons, we urge you to consider establishing a patent pool for technologies relevant to the manufacture of affordable tablets and other similar devices. We will be happy to meet you, at your convenience, to talk about the legal and other issues involved in such a project.

Thank you.

Yours sincerely,

Sunil Abraham
Executive Director

Copies to:

Dr. Shashi Tharoor, Hon’ble Minister of State for Human Resource Development;
Shri Jitin Prasada, Hon’ble Minister of State for Human Resource Development;
Shri Ashok Thakur, Secretary;
Smt. Amita Sharma, Additional Secretary;
Shri Amit Khare, Joint Secretary.

[1].Compulsory licensing has long been favoured in India to enable public access to essential technologies. The Report on the Revision of the Patent Law, 1959 by a Committee headed by Justice N. Rajagopala Ayyangar advocated a strong compulsory licensing regime that formed the basis for the unamended Patents Act, 1970. The recent decision of the Supreme Court of India in the matter of Novartis v. Union of India (CA 2706-2716 of 2009) creates a judicially enforceable precedent in respect of enabling affordable access to patented technologies in the public interest.

[2]. In addition, the decision of the Controller of Patents, Mumbai, in NATCO Pharma and Bayer Corporation (CL Application 1 of 2011) that upheld the issue of a compulsory licence in respect of a particular pharmaceutical promotes the principle of affordable access to essential technologies. The issuance of a compulsory licence to establish a patent pool will not violate India's commitments under the Agreement on Trade-Related Intellectual Property Rights (TRIPS Agreement) of the World Trade Organisation.

For more details visit https://cis-india.org/a2k/blogs/letter-for-establishment-of-patent-pool-for-low-cost-access-devices

Pervasive Technologies: Patent Pools

nehaa — 2013-07-03T06:57:59Z

In this research paper, Nehaa Chaudhari gives an analysis of patent pools. She discusses the working of a patent pool, study patent pool in other areas of technology, and patenting in telecom and related technology.

Click to download the full research paper here (PDF, 475 Kb)

Introduction

The network landscape over the past few years has been characterized by several battles of supremacy between two or more rival technologies. [1] These battles have included, inter alia, the constant efforts at besting rivals in the arena of patenting innovations in technology, often as a result characterised by the imposition of high royalties on rivals, for the use of one’s patents. However, having realised that such efforts at besting the other could prove detrimental for all parties concerned in the long run, and stall technological advancements which would in turn translate into lower business revenue, mechanisms were devised to ensure a relatively equitable utilization of patents in the market place. One such mechanism that has been developed is that of patent pools.

Patent pools have been developed around most areas of high end technology and research and development. Over the course of this paper, the author has confined herself to a study on patent pools in the area of telecommunications, and the issues to be addressed therein. Specifically, the author will be dealing with patent pools around 3G, 4G, LTE, TD-SCDMA and TD-LTE technologies. Within this framework, the author seeks to examine what are patent pools, whether and what kind of patent pools exist, their associated costs, their licensing arrangements and the structure of the payment of royalty, and the feasibility of these patent pools.

Understanding Patent Pools

Patent pools are agreements among patent owners through which patent owners combine their patents, waiving their exclusive rights to the patent to enable others, or themselves, to obtain rights to license the pooled patents.[2] Therefore, such pools may be focussed either on cross licensing, that is companies mutually making their patents available to each other, or on out licensing, that is, a group of companies making a collection of patents available to companies that do not or might not have patents of their own to contribute to the pool.[3] Typically, modern patent pools combine patents of various companies and are around inventions that are required to implement an established industry standard, are licensed as a whole (on an all or nothing basis) and not as individual licenses for patents owned by various companies within that pool, and are available to any non member for licensing.[4] Such licensing is done under a standard agreement and royalty rates, on a non discriminatory basis. The exception to this rule is that if certain members have contributed patents to the pool, they may receive more favourable terms, in recognition of their cross licensing relationship to the pool.[5] When viewed from a law and economics perspective, patent pools are seen to be an efficient institutional solution to various problems that arise when companies have complementary intellectual property rights, and these rights are essential to new technologies being used and employed. [6] However, this perspective also warns about the antitrust risks that may arise when competitors or potential competitors are involved in the coordination of their intellectual property. For instance, such pools may be used to allocate markets or otherwise chill competition. [7]

The Working of a Patent Pool

Generally, a patent pool may be administered in one of two ways- it may either have an administrative entity, or may also just be a system of cross licensing between two firms.[8] In case of the former, the licensing agency may be one of the patent holders, [9] or may be an independent licensing company (e.g. MPEG).[10]

The ownership of patents within the pool is retained by the owners, who then license them to the operator/administrator on a non exclusive basis, with sub licensing rights. This means that the owners are free to continue to license their patents on an individual basis, and the administrator also has the right to further license the patents to any party who is interested in licensing from the patent pool.[11] The responsibility of managing licensing and licenses is vested in the operator/administrator of the patent pool. Licensees are required to report sales and pay royalties to the pool administrator, who in turn would enforce the conditions of the license.[12] The distribution of royalties between the members of the pool is on the basis of a formula which may, or may not be transparent to non member licensees, with the pool operator retaining a management fee.[13] Typically, pool licenses are also structured in a manner so as to render difficult early termination by the licensee. The nature of the contract, once signed by a licensee, is typically binding in nature. Therefore, this would mean that the administrator of the patent pool could sue the licensee for non performance of the contract.[14] However, unless a pool operator is a member of the pool itself, it cannot sue for the infringement of patents. [15] Therefore, in the event that a patented technology were to be utilised without having taken a license, one or more of the individual patent owners would be required to take legal action. The involvement of the pool operator would be limited to being a part of any settlement discussions, if they were to occur, since one of the options for the alleged infringer could be to obtain a license for the patent pool.[16]

Drawing Parallels with Other Patent Pools

In this section of the paper, the author seeks to study patent pools in other areas of technology in order to better understand the structure and pricing of patent pools.

The ‘3C DVD’ Patent Pool
Established in 1998, the 3C DVD Patent Pool was the brainchild of Philips, Sony and Pioneer, and L.G. was subsequently inducted as a member. Philips acts as a licensing administrator for patents held by all the companies, which are over two hundred in number. These patents include those for the manufacture of the DVD players, and for the manufacture of the DVD disks themselves. [17] The player license per unit royalty was set as 3.5% of the net selling price of each player sold. This was subject to a minimum fee of $7 per unit, which after January 1, 2000 became $5 per unit. The disc license royalty was set as $0.05 per disc sold.[18]

The ‘DVD- 6C’ Patent Pool
Established in June 1999, the members of this pool at the time of its inception were Hitachi, Matsushita, Mitsubishi, Time Warner, Toshiba, and JVC. This pool was also for the DVD-ROM and the DVD- Video formats, with Toshiba acting as the administrator. [19] The royalties were set at $.075 per DVD Disc and 4% of the net sales price of DVD players and DVD decoders, with a minimum royalty of $4.00 per player or decoder, which saw a substantial reduction in 2003.[20] Subsequently, there were various changes that were made to this group, including the inclusion of newer standards, the joining and subsequent departure of IBM and other organizations as a member etc. Hitachi and Panasonic also act as regional agents in certain regions of the world.

The MPEG LA pool
The MPEG-2 is a standard for describing the coding of data inter alia, on DVD discs. For MPEG-2, a patent pool has been established, where the administrator is an independent, external organization known as the MPEG Licensing Authority, that set itself the aim to develop a patent pool for this standard. [21] The MPEG LA invited parties that thought they owned patents essential to this standard to join the program, which took off in 1997. At present, the pool has over a hundred patents and thousands of licensees.[22]

Patenting in Telecom and Related Technology

In this section of the paper, the author examines the working of patenting and patent pools in the telecommunications sector and in areas of related technology.

Early Developments and the Emergence of GSM
Patent pools are slowly developing into a key component of the telecommunications and the technological industry. The technology industry has been said to be an ecosystem, wherein there is a complex correlation between those who develop the technology and those who implement it in the creation and development of products.[23] In the telecommunications industry for instance, each handset manufacturer has declared only a small percentage of the various types of intellectual property assets that are necessary to implement a 3G compatible cellular phone. Therefore, the working in such a context is that various companies develop different technologies, and the same is shared by various manufacturers that seek to make use of this technology.[24]

The revival of patenting in the sector of telecommunications, post a period of decline in the decades of the 19540s to the 1980s, is attributed to the advent of the GSM standard for mobile communications in Europe.[25] In 1988, the main European operators invited equipment suppliers and developed a procedure wherein manufacturers would have to give up their intellectual property rights and to provide free world wide licenses for essential patents.[26] After opposition from the manufacturers, the approach was modified to one wherein the operators required the suppliers to sign a declaration agreeing to serve all of the GSM community on fair, reasonable and non discriminatory conditions.[27] In the early 1990s, Motorola by refusing to grant non discriminatory licenses for its substantial portfolio of essential patents and only agreeing to enter into cross license agreements further intensified the debate over IPRs in telecommunications. The company only lifted these restrictions after various countries across the world expressed a preference for this standard. The experience in this standard has demonstrated that it would not be accurate to expect that all parties holding essential patents would be willing to license them to all interested parties.[28] Companies were only willing to relax their licensing conditions once revenue generating opportunities increased.

The 3G3P and the UMTS
In July 2000 the 3G Patent Platform Partnership (3G3P) and its 18 partners notified various agreements to the end of establishing a worldwide patent platform. The purpose behind this was disclosed to be that of providing a voluntary and cost effective mechanism to evaluate, verify and license patents that were essential for third generation (3G) mobile communication systems.[29] It was also claimed that the said agreements would have pro competitive effects and that the purpose behind this Platform was the facilitation of access to technology and consequent entry into the markets.[30] On the intellectual property front, the purpose was to reduce cost uncertainties and the delays that were accompaniments of licensing numerous essential patents for complex technologies.

While it has often been considered to be a patent pool, this arrangement has been said to be only similar to a patent pool.[31] The 3G3P itself has argued that since it was a mere facilitator of transactions between patent holders and licensees, and that membership was open to both licensors and licensees as opposed to only licensors as in the case of patent pools, it would be fallacious to classify the Platform as a patent pool. Further, it has also been argued that licensing by members is not restricted to the Platform and that there was no bundling or real pooling of the patents per se and those licensees have the opportunity to pick and choose between patents with the licensing being carried out on a bilateral basis. Additionally, unlike in a patent pool, there is no single license between the patent holders as a collective and the licensee, and the parties have a choice between the Standard License of the Platform, and a negotiable individual license.[32] A Standard License provides for Standard Royalty Rate, a Maximum Cumulative Royalty Rate and a Cumulative Royalty Rate.[33] Bilateral transactions on the other hand, are negotiated between the parties where the consideration is to be determined on fair and equitable terms.[34] This Platform also provides for a price cap, which, instead of being absolute and set at a pre-determined royalty rate, is a default five percent maximum (not minimum) cumulative royalty rate for potential licensees per product category.[35] The royalty rate for each individual patent will differ for each of the licensees and this depends on the patent portfolio under each product category that the licensee has chosen.[36]

The concerns and challenges of the GSM experience were well perceived during the determination of the course of action for UMTS. European actors were especially wary of Qualcomm and expected the firm to demand high license fees, with some even fearing them to be in excess of 10%.[37] Subsequently, various attempts at developing licensing schemes failed, until 2004 and the establishment of the W-CDMA Patent Licensing Programme for UMTS FDD patents.[38] At the outset, seven licensors offered their patents as a bundle to prospective licensors, a number which decreased over time.[39]

The Development of LTE Patent Pools
The next stage in the process of innovation in the realm of telecommunications was the development of the Long Term Evolution (LTE) Standard, which while being essential to 4G technology has also seen application in the realm of 3G. Consequently, patent pools or similar structures have been developed in these areas. LTE patents are being viewed as among the most valuable intellectual property resource in the mobile telecommunications industry, with most operators around the world building LTE networks.[40]

As per in a study conducted in 2011, 23% of the patents about this technology were owned by L.G. Electronics, with Qualcomm coming in second with 21%. Motorola Mobility, InterDigital, Nokia and Samsung each owned 9%, China’s ZTE owned about 6%[41] and Nortel owned 4%, which were later sold to a consortium of Apple, EMC, Ericsson, Microsoft, Research in Motion (RIM) and Sony, after Nortel filed for bankruptcy in 2009.[42] Ericsson also independently owns 2% of the patent pool and RIM owns 1%.[43] However, another analysis[44] of IP databases conducted by ZTE in 2011 revealed differing results. As per this analysis, InterDigital was the leader, with its Patent Holdings arm controlling 13% and the Technology arm controlling 11% of LTE essential patents. Qualcomm controlled 13%, Nokia and Samsung 9% each, Ericsson controlled 8%, as did Huawei, ZTE controlled 7%, L.G. controlled 6% and NTT DoCoMo brought up the rear with 5%. The remaining 11% was held by various other firms.[45] It is to be realized that these studies have often come under criticism from different companies, with each of them eager to portray themselves as the market leader.[46] Setting aside criticism driven by corporate egos, the principle of it, that is, the difficulty in assessing and valuing patents cannot be disputed. Valuing patents is far from merely counting the number of patents owned by a company. The complications are especially evident when it comes to determining which of these patents are essential and which of them aren’t. Additionally, the worth of these patents varies depending on the existence or the absence of certain conditions, including transfer restrictions, cross licensing arrangements, ownership and market conditions.[47]

The aforesaid discussion reveals the complexity and the fragmentation of the LTE environment, which further underscored the need to have patent pools in this field. Although the need for a patent pool was realized in 2009-2010, given that the WCDMA patent pool had been met with very limited success,[48] industry watchers were reluctant to be optimistic. This was in part fuelled by the understanding of the attitude of dominant players, wherein they continued to believe that they could derive more monetary, cross licensing and litigation defence value if they did not pool their patents.[49]

The development of LTE patent pools can be traced back to 2009, and the response of Via Licensing¸ Sisvel and MPEG LA to a Request for Information on forming such a patent pool by the Next Generation Mobile Network Alliance (NGMN).[50] Sisvel’s proposal, which it subsequently made at a public conference in 2010 sought to demonstrate that patent pools could prevent excessive costs from royalty stacking.[51] Among various other examples, Roberto Dini, the founder of Sisvel suggested that if patents were to be licensed individually, for instance, 85 patents for MPEG video at 50 cents apiece would cost $42.50. As opposed to this, the patent pool charged $2.50.[52] In 2011, the NGMN reiterated its recommendation to all stakeholders in the mobile industry that were interested in developing patent pools to hasten their development process to avoid further delays in LTE licensing.[53] The NGMN also went on to state that it would be ideal if all the parties were to agree on a single patent pool that promoted reasonable royalties, offered certainty on the availability of the licenses for patents and created a framework for evaluation of their essentiality, where the value of the patents essential to the pool would be established by the industry.[54] These recommendations were not without their fair share of criticism, both, from industry watchers[55] and from vendors.[56] Notwithstanding these reservations, both, Sisvel[57] and Via Licensing have gone on to issue calls for patents for the purposes of creating patent pools in the LTE marketplace.

The Sisvel LTE Patent Pool materialized in late 2012, wherein licenses were offered under a portfolio of patents essential to LTE.[58] The pool includes patents owned by Cassidian, the China Academy of Telecommunication Technology, the Electronics and Telecommunications Research Institute, France Telecom, TDF, and KPN, in addition to some patents that had been originally filed by Nokia but were acquired by Sisvel in 2011.[59] The pool is also open to other organizations that have patents essential to LTE. At present, the current portfolio of these patents is available under standard terms and conditions. The running royalty rate is 0.99 Euros per device.[60]

Having promised a launch within a few months in June, 2012[61] Via Licensing has also developed its own LTE Patent Pool, with the initial companies in this pool being AT&T, Clearwire Corporation, DTVG Licensing, HP, KDDI Corporation, MTT DoCoMo, SK Telecom, Telecom Italia, Telefónica and ZTE.[62] Like Sisvel’s Patent Pool, this pool is also open to other organizations that believe they possess essential LTE patents, and they are encouraged to submit the same for evaluation.[63] The patent pool floated by Via leans heavily towards service providers, but some of the big players in the industry including Nokia, Ericsson, Huawei Technologies and Samsung Electronics are conspicuous by their absence.[64] This absence is felt even in Sisvel’s patent pool, with the reasoning being proposed[65] that these key patent holders may prefer private licensing and subsequent litigation over pooled resources in patent pools.[66] Understandably, the launch of the LTE Patent Pools has been met with approval by the NGMN[67] but given the nascent stages in which both of these pools find themselves, it would be premature to comment (without first observing for a few months) the likelihood of their success or failure and how they would play out against each other.

The TD-SCDMA and the TD-LTE
Reportedly, China has spent several billion dollars on the import of analog and GSM technology,[68] and the country’s mobile communications industry continues to be dominated by foreign players.[69] Therefore, in continuation of a purportedly growing trend[70] in the area of telecommunications as well, domestically developed systems are being preferred and developed over standardized technologies that enjoy strong patent protection outside China.[71] Besides the avoidance of paying royalties to foreigners, the idea is also to use China’s strong market presence and have more participants in China’s home grown technology.[72]

Time Divisional- Synchronous Code Division Multiple Access (TD-SCDMA), developed by the China Academy of Telecommunications Technology (CATT), in collaboration with Datang and Siemens[73] is a Chinese indigenously developed 3G technology standard developed by China to reduce its dependence on western standards.[74] Interestingly however, it has been reported that the Chinese hold core patent technology only about 7% whereas most of the rest of it is taken by other foreign organizations.[75] In 2000, an industry consortium, the TD-SCDMA forum was established. The participants were China Mobile, China Telecom, China Unicom, Huawei, Motorola, Nortel, and Siemens, with the objective of developing and supporting this technology. Government support was received in 2002, following which the TD-SCDMA Industry Alliance was founded by well known market players including Datang, SOUTEC, Holley, Huawei, LENOVO, ZTE, CEC and China Putian. There has also been the creation of various joint ventures with international giants such as Alcatel, Ericsson, Nokia, (erstwhile) Nortel, Philips, Samsung and Siemens have also been created.[76]

Information about the existence of patent pools in this technology has been hard to come by. One of the few to write about patent pools in his 2008 paper,[77] Dazheng Wang proposes patent pools as a solution to the problem of commercialization of TD-SCDMA. He suggests that the framework of this patent pool should be on the industry principles of fair, reasonable and non discriminatory licensing terms for essential patents, with the end result being one of increased innovation and competition and an overall increase in market presence. Interestingly, a few articles[78] on blog posts on the internet speak about the existence of patent pools and their apparent misuse[79] as well.

It is submitted that these inconsistencies regarding the division of patents between various patent holders, where the percentage of patents held by each company have been pegged differently,[80] and about the existence of a patent pool or not raise pressing concerns about the payment of royalties and how licensing works in such a situation. On a very basic level, in order to be able to pay royalties and enter into licensing agreements, the existence of an identified, non disputed patent holder would be the sine qua non, which seems to be missing in the case of patents for TD-SCDMA. This problem is only further compounded by the lack of clarity on the very existence of patent pools. Had there been specified patent pools, the issues of determination of essential patents and the setting of royalties and licensing fees would have been standardized, a situation that cannot be invoked, without dispute, in the present Chinese context.

It is further submitted that despite China being the world’s largest market for mobile communications, and its progress from a mere importer to a developer of some parts of technology,[81] the Chinese experiment with TD-SCDMA seems to have met with limited success, in comparison to what was envisaged. For instance, while an agency had forecast that the number of TD-SCDMA subscribers in 2010 would be 34 million, by April, 2010 there were only 8 million or (even lower) subscribers.[82] One of the reasons for preferring other standards, for instance, the W-CDMA is the number of handsets compatible with the same and the consequent variety that is available to the consumer. To illustrate, one could look at the figures from June, 2010. At this point of time China Unicom had 94 models for W-CDMA from twenty four manufacturers including nine foreign ones, whereas China Mobile had only twenty eight models that were compatible with TD-SCDMA.[83] Interestingly, if one were to measure popularity in terms of sheer numbers, TD-SCDMA would emerge the winner over W-CDMA by a couple of million subscribers, but if the growth rate were to be considered, W-CDMA would come out on top. While TD-SCDMA grew only by 24%, W-CDMA has grown at 32% monthly since the start of its service is October, 2009.[84]

China’s experiments with creating its home grown telecommunication standards have not stopped with the development of the TD-SCDMA, with the country being on track in the development of the TD-LTE. Reports suggest that although the systems are in ‘trial’ mode officially, the 4G spectrum situation remains uncertain.[85] It is submitted that although this is in the nascent stages as compared to the TD-SCDMA, the concerns expressed earlier about TD-SCDMA and the suggestions made therein for the technology to realise its full potential would be equally applicable in this scenario as well.

Therefore, in light of this discussion it would not be fallacious to conclude that while the TD-SCDMA, and now more recently the TD-LTE standard might still be in its nascent stages, on a fundamental level it seems to have not fulfilled the objectives with which it was developed, especially given that a sizeable portion of its patents continue to be owned by foreign corporations. In addition to the challenges of attracting subscribers, it would also need to streamline its system of patents, royalties and licensing, if it wants to have a truly global or even national presence. To this end perhaps patent pools structured along the lines of those being developed or in place for other mobile communication technologies might provide a viable solution meriting consideration.

Concluding Observations

One of the fundamental concerns that plague most downstream organizations in the mobile communications sector is the prevalence of high licensing fees that need to be paid on essential patents, the cost of which often trickles down to the customers. A study on the licensing arrangements prevalent at the moment[86] reveals that as of the moment, the result of royalty rate caps is that they save money for downstream manufacturers, but this is at the expense of upstream licensors. The most significant savers are the ones downstream with no IP to trade, and vertically integrated companies while losing some revenue, are able to save significantly more in reduced expenses.[87]

Therefore, it comes as no surprise that efforts at limiting aggregate licensing fees have been at the forefront over the past couple of years. It is in this scenario that patent pools have developed, with operators such as Via Licensing and Sisvel even promoting themselves as being able to put together patent pools that would greatly limit licensing fees.[88] However, some owners of intellectual property continue to find bilateral licensing and cross licensing to be more profitable as opposed to patent pools.

One of the key concerns when it comes to fore when dealing with how patent pools are structured is about the distribution of income received from royalties within the members of the pool, which ties in with the bigger question of classifying patents as essential and non essential. More often than not, patent pools also have to grapple with the problem of members having conflicting interests. For instance, manufacturers have the incentive to cap aggregate royalties of certain essential patents that they would use in manufacturing, in order to reduce their licensing costs. However, these manufacturers could have also brought their own essential patents to the pool, perhaps of a new way of doing things, and would certainly be averse of having caps imposed on these royalties.

One of the key other considerations that patent pools need to take into account include the royalty rates affixed. In an interview some time ago, the founder of Sisvel, went on to state that while affixing these royalty rates, there could be no discrimination against licensees, since that would be a sure fire way of ensuring the collapse of the patent pool.[89] Additionally, patent pools also need to account for the difference in regulatory mechanism and their execution that exists across jurisdictions. For instance, customs officials in France pay a lot more attention to counterfeit goods than they would to patent infringing products, whereas those in Germany would have a keen eye on the latter.[90]

Various other concerns have also been identified with regard to patent pools over time. One of these is that they could potentially eliminate competition that comes from outside of patent pools.[91]

Additionally, patent pools are not all inclusive, since participation is entirely voluntary. Therefore, patent pools would not even be reasonably expected to cover all essential patents required to make a standardised product. This problem is rendered even more complex as a result of the presence of multiple patent pools around the same technology, as in the case of DVDs and more recently, LTE technology.

In sum, while portfolio cross licenses and patent pools can be helpful in resolving issues created by patent thickets by reducing transaction costs for licensees, while preserving to a definitive extent financial incentives for inventors to commercialize their existing inventions and undertake new research, the significant shortcomings of these pools also need to be taken into account before they can be heralded as the solution to problems presented by complex patent landscapes. While voluntary patent pools might have proved to be beneficial in some respects, the imposition of patent pools would be a fallacious approach to undertake.

[1]. Hui Yan, The 3G Standard Setting Strategy and Indigenous Innovation Policy in China: Is TD-SCDMA a Flagship?, DRUID Working Paper No 07-01, available at http://www2.druid.dk/conferences/viewpaper.php?id=1454&cf=9 (last accessed 07 12 2012)

[2]. Josh Lerner and Jean Tirole, Efficient Patent Pools, 4 Am. Econ. Rev. 691, 691 (2004)

[3]. Patent Pools- Some Not So Frequently Answered Questions, available at http://blog.patentology.com.au/2012/11/patent-pools-some-not-so-frequently.html (last accessed 10 December, 2012)

[4]. Id.

[5]. Id.

[6]. Philip B. Nelson, Patent Pools: An Economic Assessment of Current Law and Policy, Rutgers Law Journal, Volume 38:539, 559 (2007)

[7].

[8]. Roger B. Andewelt, Analysis of Patent Pools Under the Antitrust Laws, 53 ANTITRUST L.J. 611, 611 (1984).

[9]. Philips has been known to have been the licensing agency for patent pools where it was a member

[10]. Supra note 3

[11]. Supra note 3

[12]. Supra note 3

[13]. Supra note 3

[14]. Supra note 3

[15]. Supra note 3

[16]. Supra note 3

[17]. Rudi Bekkers et. al., Patent Pools and Non Assertion Agreements: Coordination Mechanisms for Multi Party IPR Holders in Standardization, available at http://www-i4.informatik.rwth-aachen.de/Interest/EASST_Bekkers_Iversen_Blind.pdf 22 (last accessed 09 December, 2012)

[18]. Id.

[19]. Id.

[20]. Id.

[21]. Supra note 17 at 23.

[22]. Supra note 17 at 23.

[23]. Keith Mallinson, Fixing IP Prices with Royalty Rate Caps and Patent Pools, available at http://ipfinance.blogspot.in/2011/07/fixing-ip-prices-with-royalty-rate-caps.html (last accessed 10 December, 2012)

[24]. Id. See Appendix 1 for a graphical representation of declared intellectual property assets in 2009.

[25]. Supra note 17 at 25

[26]. Supra note 17 at 27

[27]. Supra note 17 at 27

[28]. Supra note 17 at 28

[29]. Dessy Choumelova, Competition Law Analysis of Patent Licensing Agreements- the Particular Case of 3G3P, available at http://ec.europa.eu/competition/publications/cpn/2003_1_41.pdf- 41 (last accessed 10 December, 2012)

[30]. Id.

[31]. Id.

[32]. Id.

[33]. Id at 42.

[34]. Id at 42.

[35]. Id at 42-43.

[36]. Id at 43.

[37]. Supra note 17 at 29.

[38]. Supra note 17 at 39.

[39]. Supra note 17 at 39.

[40]. Elizabeth Woyke, Identifying the Tech Leaders in LTE Wireless Patents, available at http://www.forbes.com/sites/elizabethwoyke/2011/09/21/identifying-the-tech-leaders-in-lte-wireless-patents/ (last accessed 08 December, 2012)

[41]. Id.

[42]. Id.

[43]. Id.

[44]. Caroline Gabriel, ZTE Claims 7% of LTE Essential Patents, available at http://www.rethink-wireless.com/2011/01/11/zte-claims-7-lte-essential-patents.htm (last accessed 09 December, 2012)

[45]. Id.

[46]. Id.

[47]. Supra note 40.

[48]. Keith Mallinson, Mallinson: Uncertain Futures in LTE Patent Pool Licensing, available at http://www.fiercewireless.com/europe/story/mallinson-uncertain-outlook-patent-pool-licensing/2010-08-25 (last accessed 10 December, 2012)

[49]. Id.

[50]. Id.

[51]. Id.

[52]. Id.

[53]. NGMN Board Recommendation on LTE Patent Pool, available at http://4g-portal.com/ngmn-board-recommendation-on-lte-patent-pool (last accessed 10 December, 2012)

[54]. Id.

[55]. Caroline Gabriel, NGMN’s Calls for an LTE Patent Pool Will be Futile in the Current IPR Climate, available at http://www.4gtrends.com/articles/53511/ngmns-calls-for-an-lte-patent-pool-will-be-futile-/ (last accessed 11 December, 2012)

[56]. Michelle Donegan, Vendors Balk at LTE Patent Pool Proposal, available at http://www.lightreading.com/document.asp?doc_id=212362 (last accessed 11 December, 2012).

[57]. SISVEL: Patent Pool for 3G Long Term Evolution (LTE), available at http://www.thefreelibrary.com/SISVEL%3A+Patent+Pool+for+3G+Long+Term+Evolution+(LTE).-a0199544458 (last accessed 08 December, 2012)

[58]. LTE Patent Pool from Sisvel, available at http://4g-portal.com/lte-patent-pool-from-sisvel (last accessed 09 December, 2012)

[59]. Id.

[60]. Id.

[61]. Mike Dano, Via Promises LTE Patent Pool Launch Within Months, available at http://www.fiercewireless.com/story/licensing-promises-lte-patent-pool-launch-within-months/2012-06-15 (last accessed 07 December, 2012)

[62]. LTE Patent Pool Available Through Via’s Licensing Program, available at http://4g-portal.com/lte-patent-pool-available-through-vias-licensing-program (last accessed 10 December, 2012).

[63]. Id.

[64]. Stephen Lawson, Lte Patent Pool Brings Together Technologies From At&T, Zte, Hp And Others, available at http://www.computerworld.com/s/article/9232043/LTE_patent_pool_brings_together_technologies_from_AT_amp_T_ZTE_HP_and_others (last accessed 09 December, 2012)

[65]. Peter White, Sisvel LTE Patent Pool Emerges After All- Majors Still Hold Back from Committing, available at http://www.rethink-wireless.com/2012/11/05/sisvel-lte-patent-pool-emerges-all-majors-hold-committing.htm (last accessed 09 December, 2012)

[66]. Shankar Pandiath, Sisvel Launches Patent Pool for 3G Long Term Evolution (LTE), available at http://next-generation-communications.tmcnet.com/topics/nextgen-voice/articles/314957-sisvel-launches-patent-pool-3g-long-term-evolution.htm (last accessed 09 December, 2012).

[67].NGMN Board Welcomes Launch of LTE Patent Pool, available at http://4g-portal.com/ngmn-board-welcomes-launch-of-lte-patent-pool (last accessed 09 December, 2012).

[68]. ELSPETH THOMSON AND JON SIGURDSON (EDS.), CHINA’S SCIENCE AND TECHNOLOGY SECTOR AND THE FORCES OF GLOBALIZATION 17 (2008, World Scientific Publishing Company, Singapore).

[69]. Cong Cao, Challenges for Technological Development in China’s Industry, available at http://chinaperspectives.revues.org/924 (last accessed 11 December, 2012)

[70]. Peter Zura, China Launches TD-SCDMA Telecom Standard¸ available at http://271patent.blogspot.in/2006/01/china-launches-td-scdma-telecom.html (last accessed 10 December, 2012)

[71]. Id.

[72]. Id.

[73]. TD-SCDMA (time division synchronous code division multiple access), available at http://searchmobilecomputing.techtarget.com/definition/TD-SCDMA (last accessed 07 December, 2012).

[74]. SHAHD AKHTAR AND PATRICIA ARINTO (EDS.), DIGITAL REVIEW OF ASIA PACIFIC : 2009-2010 8 (2010, Sage Publications, New Delhi).

[75]. Supra note 1 at 2. See Appendix 2 for the breakup of patent holding. However, see details on Infra note 78 for a contradictory view, wherein China claims to own 30% of all TD-SCDMA patents.

[76]. Pierre Vialle, On the relevance of Indigenous Standard Setting Policy: the Case of TD-SCDMA in China, 2^nd International Conference on Economics, Trade and Development, (2012) 36 IPEDR 184-185 (IACSIT Press, Singapore).

[77]. Dazheng Wang, Patent Pool: A Solution to the Problem of TD-SCDMA’s Commercialization, http://ieeexplore.ieee.org/xpl/login.jsp?tp=&arnumber=5076744&url=http%3A%2F%2Fieeexplore.ieee.org%2Fiel5%2F5076660%2F5076661%2F05076744.pdf%3Farnumber%3D5076744 (last accessed 11 December, 2012).

[78]. China Owns 30% of TD-SCDMA Related Patents, available at http://www.cn-c114.net/582/a310685.html (last accessed 11 December, 2012).

[79]. The Legal Regulation on Patent Pool Misuse, available at http://www.socpaper.com/the-legal-regulation-on-patent-pool-misuse.html (last accessed 11 December, 2012).

[80]. Supra notes 75 and 78.

[81]. Tomoo Marukawa, Chinese Innovations in Mobile Telecommunications: Third Generation vs. “Guerrilla Handsets”, Paper presented at the IGCC Conference: Chinese Approaches to National Innovation, La Jolla, California, June 28-29, 2010 at 1.

[82]. Id at 8.

[83]. Id at 9.

[84]. Id at 9.

[85]. China to Speed Up TD-LTE Process, available at http://www.tdscdma-forum.org/en/news/see.asp?id=11998&uptime=2012-11-29 (last accessed 08 December, 2012)

[86]. Supra note 23.

[87]. Id.

[88]. Supra note 23.

[89]. Sisvel’s Patent Strategy, available at http://www.managingip.com/Article/2400452/Sisvels-patent-strategy.html (last accessed 12 December, 2012).

[90]. Id.

[91]. Supra note 23.

For more details visit https://cis-india.org/a2k/blogs/patent-pools

Governance in the Age of the Internet and Free Trade Agreements

praskrishna — 2013-07-03T05:04:39Z

Sunil Abraham was a speaker at this event organized by Thai Netizen Network on June 8, 2013 at Queen Sirikit National Convention Center. The Ministry of Information and Communication and the National Science and Technology Development Agency were co-hosts for the event.

Click to read the details of the event published on Internet Society website

In the age of accelerated international trade and the promotion of free flowing cross-border data transactions, countries and regions are working towards forming a commonly agreed modus operandi and protocols. These protocols seek to facilitate the growth of e-trade, ensure a secure data flow(economic transactions) and protection of its data in the network. In the recent, there has been strong attention by consumers and businesses with the growing scope and content of these agreements addressing Intellectual Property (IP). Emerging trend studies show that there is a growing practices to incorporate mutually exclusive arrangements without involving other stakeholders which happens in closed door negotiations i.e. government to government.

For instance, the European’s Anti-Counterfeiting Trade Agreement (ACTA) proposal and the U.S. Trans-Pacific Partnership Agreement (TPP).

The bigger concern raised by other stakeholders has been the secrecy of these arrangements and the insufficient protection of consumers and citizens rights in its consideration. So far, the lack of legitimacy and proportionality of legal policy measures has created unintended consequences and collateral damages in far reaching manners whether socially, economically or technologically. Citing practices of filtering technology, deep packet inspection, and Internet cut-off, are introduced by internet service providers to meet legal requirements. Activities in question may vary from country to country, some focus on violations of intellectual property, some on the control of political voices.

Notably, list of concerns have been raised explicitly by UN Special Rapporteur to adhere to the promotion and protection of the right to freedom of opinion and expression were recommended.

This workshop is aim to create discussion on the related topics among stakeholders both in Thailand and in the region of the direct and indirect implications of various developments.

Target: Regulators, consumer rights, human rights activities, Lawyers

Expected Outcomes

Understanding the dynamics of free trade agreements (i.e. APEC, TPP, and ACTA) and its implications on Internet regulations, national sovereignty, and civil rights from various perspectives. (Big picture)
Basic understanding of how various policy and technology related measures or solutions (i.e. digital rights management technology and deep-packet inspection) are used to address Intellectual Property (IP) and how it directly impacts freedom of expression and individual privacy.
Looking Ahead: The developments and upcoming legislations/regulation challenges in both Thailand and the region i.e. new draft of Computer-related Crime Act, new draft of Copyright Act, and the Personal Data Protection Bill.

Panelists

Sunil Abraham, Executive Director, Centre for Internet and Society, Bangalore
Konstantinos Komaitis, Policy Advisor, Internet Society, Geneva
Nakorn Serirak, Policy Advisor, Thai Netizen Network, Bangkok
Sawatree Suksri, Lecturer, Faculty of Law, Thammasat University, Bangkok
Lokman Tsui, Policy Advisor, Google Asia Pacific, Hong Kong

Moderator

Mike Hayes, Chair, International MA Program in Human Rights, Mahidol University

Click the PDFs below to download the full details and the presentation:

For more details visit https://cis-india.org/news/inet-bangkok-june-8-2013-governance-in-the-age-of-internet-and-fta

On the Unfortunate Rise of the Indian SLAPP Suit

ujwala — 2013-06-05T06:55:41Z

It is not news in this country when the law or other institutions of the state, are used as tools by which to threaten or intimidate citizens into submission to a particular course of action or to a particular point of view. Unfortunate as that is, today’s post will deal with the rising incidence of SLAPP suits, an abuse of the adjudicatory process that is also a feature in a number of jurisdictions elsewhere.

Our interest in them arises from two sources. The first is the particular damage that this device is able to do free speech. Its effects were quite picturesquely described in the following terms by the Delhi High Court in M/S. Crop Care Federation Of India v. Rajasthan Patrika (Pvt) Ltd. “Short of a gun to the head, a greater threat to First Amendment expression can scarcely be imagined.” [Rajasthan Patrika in turn borrowed this language from Gordon v. Marrone, a case in the New York Supreme Court.] The second is this piece of news.

About the Phenomenon
The term “Strategic Lawsuits Against Public Participation” is rather self-explanatory. Nevertheless, some of its features bear the explicit articulation:

First, there is always, and necessarily, a power imbalance between the parties in such cases: the plaintiff or complainant will always have greater and often disproportionately greater access to the resources necessary to enter and sustain a litigation, in addition to social, political or corporate power. A simple shorthand for SLAPP suits will always be Deep Pockets v. Free Expression. And so it has been in India, as this article evidences.

Second, there is always one object: to intimidate a target into silence or apology by way of legal action or the threat of it. SLAPPs are a win-win play for those that employ them: targets are likely to bow to the pressure given that they will not have access to the resources to mount a legal defense. Even where the defendants’ (relatively scarce) resources are diverted to the defense of their speech, even assuming that the threat and costs of litigation, the civil damages and/or penal consequences do not intimidate them, their opportunity cost will be considerably higher than that of the other party. Given the ordinary rigours of the adjudicatory process and the ubiquitous delays associated with it in India, however, the harassment function of the SLAPP is always achieved.

Third, SLAPP suits are always characterized by a flimsy, frivolous or even non-existent cause of action. They will have done their damage irrespective of, and before, the outcome of the suit is decided. The question of legal tenability, and in these cases, its absence is really not one of any relevance. The real damage is done by forcing defendants to bear the trouble (monetary and otherwise) with preparing and mounting the legal response/defense itself, rather than by the litigation’s ultimate success or failure. A little amusing then that in the latest instance, which I describe later in this post, it is a law student, presently in law school and writing for a legal blog who finds herself on the receiving end of such threats.

Defamation SLAPPs
Defamation is a classic tool by which contrary opinions are sought to be silenced by those in (political, social or corporate) power. Rajeev Dhavan argues here that defamation is becoming an increasingly popular tool by which the “politics of exposé” and whistleblowers participating in it are being threatened. [SLAPPs in India have arisen on the back of other causes of action as well. See, for instance, the case of S. Khushboo v. Kanniammal and Frontline discussing it.] Lawrence Liang details a number of older instances in which defamation has been used in Indian courts to silence speech here.

Much more recently, Tata Sons Ltd. v. Greenpeace International, involved intellectual property and defamation claims in a game designed to bring attention to the threat to Olive Ridley turtles from developmental activity in Orissa. The IIPM saga that rose to prominence in February this year is another instance of such litigation. It is also one that carries the added ignominy that a university, whose function one would presume is to foster critical thinking and the ability to constructively respond to criticism, would sue for defamation against criticism and use the state apparatus to employ opaque means by which to silence the allegedly offending content online [see here and here]. IIPM also demonstrates how SLAPPs will involve what have been called “creative ways” to abuse of process: more than one suit can be filed, and they can be filed in more than one jurisdiction or in jurisdictions in which it is difficult for the target of the suit to appear or defend him or herself.

On Attempts at Silencing Academic Opinion
While the Activist v. Corporation trope is by now a tired one, it appears that the incidence of SLAPP proceedings, both civil and criminal, against commentators and academics are on the rise:

Ajay Shah’s case has been a well-documented one [see here and here], and one in which the Bombay High Court did not appear to appreciate the SLAPP dynamic. Closer to home, Shamnad Basheer [see here and here] a professor at NUJS and founder of SpicyIP saw a defamation SLAPP suit for what appears to be an exercise in only academic analysis.

As of the 21^st of this month, it was reported that a student contributor at the same blog, Aparajita Lath faces similarly suspect allegations of defamation from a newspaper [see here and here]. Here is a case not of Activist v. Corporation or Whistleblower v. Government, but of Academic Opinion v. Press. There is a special and truly unfortunate irony in the press having recourse to tools like the defamation suit, and even more egregiously, the criminal complaint.

Why We Worry
A number of rights of the target are ordinarily affected by SLAPP suits. In what was a significant case for the United Kingdom involving a defamation suit brought by McDonald’s against two authors of a pamphlet criticizing it, the European Court of Human Rights (‘ECtHR’) recognized in Steel and Morris v. United Kingdom a number of the following rights:

First, there is the right to free expression itself. Violations of this right would arise on two levels, although the second may not be actionable. First, there is the right of the defendant to the SLAPP suit. Steel and Morris affirmed that the fact that the defendants to the defamation suit were not journalists did not mean that the scope of their free speech protection would differ [¶89]. Instead, it held that “the limits of acceptable criticism” where “large public companies” were concerned was wider than those that would otherwise apply [¶ 94]. India’s Supreme Court has, in one notable instance, disagreed on the proposition that bloggers should have similar rights to journalists. Next, there is the chilling effect: others placed similarly to the targets of SLAPP suits would self-censor to avoid legal retaliation for their views and the significant cost of defending themselves.

The importance of Steel and Morris however comes from this latter set of holdings. The ECtHR found that the right to fair trial, in civil and criminal cases, which included the right of access to court and to justice presumed an “equality of arms” as between contesting parties [¶ 59]. It held to this effect on the understanding that European Convention on Human Rights, the underlying rights instrument, was a guarantee of practical and effective rights. In the circumstances of that case, it found that since the financial disadvantage of the defendants in the defamation suit disallowed them the opportunity to mount an effective defence, there was a clear inequality of arms with McDonalds that rendered the trial unfair for the purpose of Convention Article 6 (1) [¶72].

The IIPM blocks add a further dimension to the problem. When the content complained against is online, India’s lack of clear legal principles to determine, and more crucially limit, where the cause of action will have arisen and can be tried will only exacerbate the blogger’s situation, given the arguably global spread of an audience for online content.

A final point about this trend, particularly as it relates to silencing academic comment, is that it is a dangerous one, and one against which we must all speak out: these cases, in which the challenged content offers studied comment against the powers that be, will be a good acid test for the strength of our speech protections as they fall squarely within the class of speech which constitutional protections seek to maximize and disinhibit. It should be the very minimum that the Article 19(1)(a) guarantee entails.