Centre for Internet and Society

36th SCCR: CIS Statement on Limitations and Exceptions Agenda

sinha — 2018-05-31T09:43:08Z

Anubha Sinha, attending the 36th Session of the World Intellectual Property Organization (“WIPO”) Standing Committee on Copyright and Related Rights (“SCCR”) at Geneva from May 28, 2018 to June 1, 2018, made this statement on the Limitations and Exceptions agenda on behalf of CIS on Day 3, May 30.

Thank you, Mr. Chair.

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

As we move forward on this agenda, we believe that for a true balance to be realised, the rights of all users of copyrighted works will have to be treated on par with those of the rightholders for purposes of access to knowledge. We are disappointed with the state of the limitations and exceptions in the broadcast treaty, that made some progress yesterday (in terms of increasing rights).

Further, as we have submitted earlier, it is our belief that the present international legal framework does not sufficiently address the opportunities presented by new information and communication technologies. We reiterate the need for open ended exceptions and limitations in this area - which should also facilitate smooth cross border exchange of knowledge.

Thank you.

For more details visit https://cis-india.org/a2k/blogs/36th-sccr-cis-statement-on-limitations-and-exceptions-agenda

NGOs circulate letter at WIPO SCCR/36 raising serious concerns about draft Broadcasting Treaty

sinha — 2018-05-29T10:42:48Z

At the 36th Meeting of the Standing Committee on Copyright and Related Rights (SCCR) at the World Intellectual Property Organisation (WIPO), negotiations on the Broadcasting Treaty continue - this time with a sense of urgency to present results of the 20 year negotiations to the UN General Assembly, scheduled in September this year. There remain long-pending issues within the Treaty, which have largely been ignored or weakly acknowledged by the Committee. In view of the threats that this Treaty poses to Access to Knowledge and the mission of educators, archivists, researchers, libraries and creators, NGOs at WIPO (including CIS) have circulated the letter below.

Joint NGO letter on the proposed WIPO treaty on broadcasting

May 28, 2018

Dear Delegates to WIPO SCCR 36

We are concerned that negotiations on a broadcasting treaty have not clarified a number of important issues, nor addressed core concerns from civil society and copyright holders.

At the outset, we are supportive of measures to address the legitimate concerns of broadcasters as regards piracy of broadcast signals. We are looking forward to seeing appropriate measures to address such challenges, provided they are well defined and limited to solving those problems, and avoid unintended consequences to impede access to and use of works, or harm copyright holders.

Our primary concerns are the following:

Term of protection/post fixation.
Limitations and Exceptions.
Public Domain works or works freely licensed by creators.
Confusion over an ever-expanding definition of beneficiaries.
Streaming on demand.
Works originated on the Internet.
Role of large Internet companies in streaming video.
Non-discriminatory and reasonable licensing terms

Term of protection/post fixation

Chairman Daren Tang’s text (SCCR/35/12) proposes a 50 year term of protection for the rights, which is a proposal backed by some broadcast groups and countries supporting the broadcasters. [1] Clearly, this implies the broadcasters will obtain post fixation rights in works they did not create nor license. A 50 year term of protection makes a mockery of the notion that this is a signal based treaty or is only concerned with signal piracy, as it effectively extends the protection beyond the term of copyright, and is a recipe for disaster as regards orphan works (just as individual countries are in the process of trying to solve the orphan works problem). To protect against signal piracy, a short term of 24 hours would make more sense than 5 decades from the date of every broadcast.

Under no circumstances should post fixation rights apply to every mere re-transmission of a broadcast signal -- a policy that would in practice result in perpetual protection of the signal, and give broadcasters more durable protections than copyright holders.

Limitations and Exceptions

There have been a number of proposals as regard limitations and exceptions, but almost no debate in the SCCR has ensued on this crucial issue. The proposals for exceptions in the Chairman’s text are narrow, and give broadcasters more robust rights than copyright owners or performers themselves.

If the broadcasters’ right does not extend to post fixation rights, or has an extremely short term, the exceptions language may be less important. But since broadcasters are seeking rights that last for half a century, i.e. post fixation rights, the exceptions become extremely important.

For any treaty involving post fixation rights, the exceptions in the broadcast treaty should include both mandatory and permissive exceptions. Mandatory exceptions should include those in Berne (news of the day and quotation), as well as for education and training purposes, personal use and preservation and archiving. The agreement should also permit non-mandatory exceptions that address both specific uses and more general frameworks such as fair dealing or fair use. Compulsory licenses should not be prohibited. If the treaty creates a layer of rights for entities that do not create, own or license the underlying works, this layer should not be used to prevent legitimate reuses of the copyrighted works.

In no event should the exceptions for broadcasting rights be less enabling for users than the exceptions that apply to copyright.

Public Domain works or works freely licensed by creators

In no cases should the treaty give broadcasters post fixation rights in works that are in the public domain, or openly licensed.

Confusion over an ever-expanding definition of beneficiaries

There is confusion over who will be the beneficiaries of the treaty. The General Assembly mandate is to limit the treaty to broadcasting in the traditional sense (see page 57 of WIPO/GA/34/16), yet during the SCCR negotiations, BBC and several Spanish language broadcasters have pressed to include Internet streaming services, under the theory that WIPO would create special rights that television broadcasters would have, even when the context was delivered over the Internet, that other entities using the Internet would not have. This assumption needs to be examined critically, to ensure it is not a naive and unrealistic assumption that a right can be given to one set of businesses and denied to another doing the same thing. And, if the right ends up being given to everyone streaming anything on the Internet, how does this change the evaluation of the costs of managing the rights, and unintended consequences?

Streamed on demand

The BBC, the Spanish language broadcasters and some others have asked that the right extend not only to live broadcasts, but also to material later streamed on demand to individuals. If the treaty extends to materials streamed on demand to individuals, there is no longer a special case for broadcasters. Millions of entities and persons stream content on demand, without a special broadcaster right, often over platforms like YouTube. It’s absurd to create a special right for streaming works on demand over the Internet, just because the company doing the streaming is a broadcast company and the work was once broadcast.

Works originally streamed on the Internet

Even more expansive are the proposals by the same broadcasters to extend the broadcasters’ right to works originally streamed on the Internet, thereby eliminating any distinction between broadcasters and every other Internet user.

Role of large Internet companies in streaming video

While many delegates see this as a treaty that will benefit local broadcasters, that is likely only to be true in the short term. And even in the short term, the more ambitious versions of the treaty are also designed to create economics rights for large foreign corporations that “schedule the content” for cable and satellite channels, such as Disney, Vivendi, and Grupo Globo. In the longer run, the treaty appears to be creating a new legal regime that will create rights for the giant technology firms largely based in the United States, that are creating global platforms for video and sound recording content, including Amazon Prime, Netflix, Hulu, YouTube, Google/YouTube Tv (https://tv.youTube.com/), Hulu tv (https://www.hulu.com/live-tv), Yahoo, Twitter, Sling TV, Facebook (https://www.facebook.com/moviestv/), Spotify (Based in Sweden), Apple Music, Google Play Music, and Pandora, all companies that could qualify as broadcasters by owning a single broadcast station.[2]

The existing content on the YouTube platform is enormous and Google is hardly a struggling company, so it seems odd that WIPO is rushing to create a legal regime that appears to give Google even greater rights over works they never created or licensed that it already has.

Non-discriminatory and reasonable licensing terms

To the extent that a broadcast treaty creates rights of any kind that impact users outside of the robust limitations and exceptions we favor, member states should have the flexibility to require licensing on reasonable and non-discriminatory terms, or remuneration rights regimes, as an alternative to exclusive rights,

Conclusion

The 2007 GA mandate asked the SCCR to consider “convening of a Diplomatic Conference only after agreement on objectives, specific scope and object of protection has been achieved.” The WIPO GA has asked the SCCR to “update the protection of broadcasting and cablecasting organizations in the traditional sense.” At the SCCR, the definition of “in the traditional sense” is now used less and less, and “future proofing” the protection more and more, without any real understanding of how a new WIPO treaty will upset the existing arranges and rights that copyright holders and users now enjoy. In particular, WIPO needs to discuss the role of giant largely U.S. based Internet platforms now delivering video or audio content, and how any new rights for companies that deliver third party owned content will redistribute income between right holders and platforms and between countries, and impede access to works.

Sincerely,

Centre for Internet and Society, India (CIS-India)

Civil Society Coalition (CSC)

COMMUNIA International Association on the Digital Public Domain

Electronic Frontier Foundation (EFF)

Electronic Information for Libraries (EIFL)

Fundación Karisma

Global Expert Network on Copyright User Rights

Innovarte

Instituto Proprietas

International Federation of Library Associations and Institutions (IFLA)

Knowledge Ecology International (KEI)

Le Conseil international des Archives (CIA)/ International Council on Archives (ICA)

Public Knowledge (PK)

Third World Network (TWN)

[1] “The term of protection to be granted to broadcasting [or cablecasting] organizations under this Treaty shall last, at least until the end of a period of 50 years computed from the end of the year in which the programme-carrying signal was transmitted.”

[2] Christopher Harrison, Why Pandora bought an FM radio station, the Hill. June 11, 2013. http://thehill.com/blogs/congress-blog/technology/304763-why-pandora-bought-an-fm-radio-station. Or be acquired by or merge with a broadcast or cable organization, such as Yahoo’s pending acquisition by Verizon.

For more details visit https://cis-india.org/a2k/blogs/ngos-circulate-letter-at-wipo-sccr-36-raising-serious-concerns-about-draft-broadcasting-treaty

36th SCCR: CIS Statement on the Proposed Treaty for the Protection of Broadcasting Organizations

sinha — 2018-05-28T14:04:53Z

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

Thank you Mr. Chair

We would like to highlight that some of the existing alternatives to the text of the Broadcasting treaty have serious issues.

Some of the points that bear re-emphasizing are problems with watering down of limitations and exceptions, and the contemplation of a fifty year term of protection without any rationale or justifications.

If you look at the history of the Committee’s deliberations, the limitations and exceptions have been significantly diluted over the years. On the other hand, the ask for increased protections in terms of number of rights, scope and term has only increased.

Further, if the protection extends only to the signal and not to the programmes contained therein, it is not clear as to why a 50 year protection is needed for an ephemeral signal.

Reiterating the words of the Asia-Pacific Group - this matter requires proper balancing from a developmental perspective. I submit that in my opinion, it does not appear that we are anywhere close to achieving that.

Thank you.

For more details visit https://cis-india.org/a2k/blogs/36th-sccr-cis-statement-on-the-proposed-treaty-for-the-protection-of-broadcasting-organizations

India's Draft Telecom Policy Needs to Bridge the Gap Between Intent and Execution

sinha — 2018-05-07T16:13:31Z

Earlier this week, India’s department of telecommunications (DoT) released a draft new telecom policy, titled ‘Draft National Digital Communications Policy 2018’.

The article originally published in the Wire on May 6, 2018 can be read here. Access the Draft National Digital Communications Policy 2018 here.

The three pillars of the draft policy are ‘Connect India’, ‘Propel India’ and ‘Secure India’, which primarily seek to improve broadband connectivity, accelerate development of next-generation technologies and services and institute measures for data sovereignty, security and safety, respectively.

Several strategies have been devised under each pillar – few carry on from previous national telecom policies, and some are new proposals.

The document is high on aspirations, a lot of which it seeks to fulfil by 2022. It also proposes several favourable institutional and regulatory changes and simplifies obtaining of permissions.

However, it remains quite open-ended in terms of how the details could evolve. For example, while it endeavours to develop a fair, flexible, simple and transparent method for spectrum assignments and allocations, by pricing spectrum at an ‘optimal price’ and linking spectrum usage charges (SUC) to reflect costs of regulation and administration of spectrum, it cannot be said if these measures will fully rejuvenate a debt-ridden telecom sector.

Ideally, the policy should have explicitly mentioned that revenue maximisation is not a goal for the government anymore, to reassure the industry that licence fees and SUC will not be astronomically priced – especially as it is in no mood to change the model of spectrum allocation from auction to revenue sharing (circa NTP-99). A clear commitment would have helped inspire more confidence in this strained sector. Regardless, these changes will also need approval from the finance ministry, where stiff resistance is expected.

Expanding both wireless and wired broadband is a clear priority of the government. It sets out four initiatives, encouraging public-private partnerships to serve both rural and urban centres (BharatNet, GramNet, NagarNet, JanWiFi), and several additional measures to accelerate laying of optical fibre, mobile towers and increase sharing of infrastructure.

Although the previous telecom policies (NTP-99, NTP-2012 and recommendations in ‘Fixing Broadband Quickly’ (TRAI, 2015)) determined the similar gaps and objectives, little has translated into concrete results so far. In 2017, ITU and UNESCO reported that India was the largest unconnected market, with 49.5% (approx. 660 million) of our population still unconnected. The report further noted that the penetration of mobile broadband was much higher than fixed-line broadband connections – and urban centres were better served than rural areas. One hopes that the new strategies and objectives will be better realised this time around.

The policy also seeks to boost domestic innovation in the field of standards in communications technologies. This is reflected in its aims to strengthen domestic IP portfolios by providing financial incentives for the development of standard-essential patents (SEPs) and promote them at standard setting organisations. It mandates access to critical, mostly foreign-owned SEPs on a fair, reasonable and non-discriminatory basis (FRAND basis). This is an approach to patent licensing that has been endorsed by courts and the Competition Commission of India in the context of mobile phone technologies, as well as in other jurisdictions.

However, it remains to be seen how this mandate will be implemented in TRAI’s forthcoming recommendations on promoting telecom equipment manufacturing in India. This is a real opportunity for the telecom regulator to help the low-cost smartphone manufacturing industry in India to overcome their disadvantage in terms of having to pay exorbitant royalties to foreign-SEP holders and getting sued for infringement in the process. Another strategy that should have found place was the creation of government-controlled patent pools for SEPs, which could have solved the issue of uncertainty for local manufacturers and ensured payments to SEP holders to a great extent.

Additionally, the policy proposes a few consumer-oriented changes such as establishing a ‘Telecom Ombudsman’ and a centralised web-based complaint redressal system. In the third pillar of ‘Secure India’, although the document does not reveal the DoT’s approach to net-neutrality nor data protection and privacy, it does say that the government will be amenable to changing the terms of license to fulfill their core principles.

Curiously, in order to ‘facilitate security and safety of citizens’ it proposes to set up ‘lawful interception agencies with state of the art lawful intercept and analysis systems for implementation of law and order and national security’. This measure did not exist in TRAI’s version of the draft policy.

On next-generation tech in the field of IoT and cloud, it retained TRAI’s suggestion of setting up ‘light-touch’ licensing frameworks. This may prove to be a barrier to innovation in the field.

While the policy is broad and forward-looking, the true intent and meaning of the listed steps will only be understood when complementary legislative and granular policy actions to support these strategies are crystallised. That will make all the difference.

For more details visit https://cis-india.org/telecom/blog/the-wire-anubha-sinha-may-6-2018-india-draft-telecom-policy

CIS' Submission on Statement of Working of Patents

sinha — 2018-04-21T15:32:00Z

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Supra note (ii).

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

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

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

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

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

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

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

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

CIS Submission on Patents Act

sinha — 2018-04-10T15:48:09Z

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

CIS' Submission to DIPP and CGPDTM at meeting with IP Stakeholders

sinha — 2017-12-13T14:31:54Z

The Office of the Controller General of Patents, Designs and Trademarks held a meeting with IP stakeholders on December 7, 2017, chaired by the Secretary, DIPP, to take suggestions on improving procedures and functioning of the Office. Anubha Sinha attended the meeting and requested the DIPP to improve compliance of uploading Form 27s by patentees and ensure proper enforcement of related provisions within the Indian Patent Act, 1970. Additionally, we sent a detailed submission to the Office, drawing from our recent research. Thanks to Rohini Lakshane and Aman Goyal for their inputs.

Submission to the Department of Industrial Planning and Promotion (DIPP) at Meeting with IP Stakeholders on 07 December, 2017

1. As the DIPP is aware, the Indian mobile device manufacturing industry is mired in issues related to licensing of standard essential patents (SEPs). Disputes have resulted in imposition of heavy interim royalty rates on Indian manufacturers, payable to foreign SEP holders. Section 146(2) of the Patent Act, 1970 mandates patentees to provide information on working of patents, which is crucial for willing licensees to access patent working information in a timely manner. This requirement, that the details of patent working be disclosed by patentees supports the goal of making unworked patents available for compulsory licensing in India, both to promote economic development and public access to patented products. Penalties for failing to furnish such information (via Form 27) are steep, potentially resulting in fines or imprisonment.

2. We note that in 2009, 2013 and 2015 the Controller issued public notices calling on patent owners to comply with their obligations to file statements of working on Form 27. Further, on February 12, 2013, the Indian Patent Office (IPO) announced plans to make Form 27 submissions for the year 2012 available to the public via the IPO website.

3. We commend the efforts of the IPO, however, our empirical research on ICT innovations[i] as well as by Prof. Shamnad Basheer (on ICT and pharmaceutical sector)[ii] reveals that there are serious lapses as far as compliance and enforcement of statutory provisions mandating filing of Form 27 are concerned.

4. In the past year, we studied data available from 2009- 2016 for the mobile device sector, and could only identify and access 4,916 valid Forms 27, corresponding to 3,126 mobile device patents, leaving 1,186 Indian patents for which a Form 27 could have been filed, but was not found.[iii] For a surprising number of Form 27s (3%) the working status of the relevant patent was not designated.

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

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

5. Regardless, we submit that these technical difficulties should not hinder the critical statutory requirement placed on patent holders to diligently comply with Form 27 compliance. In the context of licensing of SEPs, several stakeholders recently suggested solutions as revealed from our study of the submissions made to the TRAI Consultation on Promoting Local Telecom Manufacturing[v]:

Two industry associations, namely Telecom Equipment Manufacturers Association of India (TEMA) and Telecom Equipment & Services Export Promotion Council (TEPC) and a telecommunication enabler Vihan Network Limited recommended that a modified and longer version of Form 27 (Form 27S) may be designed for SEP holders that should apply right at the filing stage. Section 159 of the Patent Act, 1970 empowers the central government to make such modifications to the form, as necessary.[vi]
Further, Prof. T Ramakrishna (MHRD Chair on Intellectual Property Rights) at NLSIU, specifically recommended that Form 27 may be amended to include a new column, which may require the patent holder to declare if their patent forms a part of any standard and in case of affirmative answer – the name of the Standard Setting Organisation and corresponding standard of which it is a part.

6. Further, we would like to draw attention to how our study was limited by the technical capabilities of the Indian Patent Office’s online Form 27 repository, such as[vii]:

IPAIRS returned either a 404 error or Connection Time Out ("site is taking too long to respond") http://ipindiaonline.gov.in/patentsearch/search/index.aspx. In our opinion, it could be redirected to InPASS as it uses the same search engine as InPASS. Further, http://ipindia.nic.in/patsea.htm returned a 404 error.
Some PDFs of the forms comprise scanned image files without OCR of the text. This makes them inaccessible to the visually impaired, and prevents search and discoverability of their content. This also makes them less usable by preventing copying and selection of text.
In some cases, it was difficult to identify which one in the list of documents associated with a patent is Form 27, because of obscure filenames.

For example, for Patent Number 262228, Form 27 was named 68.262228.pdf, as found on IPAIRS.
For Patent number 260603, the filename for Form 27 was "ipindiaonline.gov.in_epatentfiling_online_frmPreview.asp.pdf" on IPAIRS.

Inconsistency in search results found on IPAIRS. Searching for the peripheral documents of the patents, returned the results, "No PDF found" for one full week. The next week, the documents started showing. Some searches returned results for an entirely different patent number.
Sometimes, Form 27 found on InPASS was not found on IPAIRS and vice versa.
Runtime errors occur due to browser caching.

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

Annexure

Complete Data of CIS’ Study[i]

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

[ii] See Shamnad Basheer, Making Patents Work: Of IP Duties and Deficient Disclosures, 7 QUEEN MARY J. INTELL. PROP. 3, 16-17 (2017).

[iii] Supra note 1.

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

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

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

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

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

For more details visit https://cis-india.org/a2k/blogs/cis-submissions-to-dipp-and-cgptdm-at-meeting-with-ip-stakeholders

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sinha — 2017-12-13T10:27:18Z

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sinha — 2017-12-13T10:25:47Z

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Submission to DIPP at Meeting with IP Stakeholders

sinha — 2018-01-01T01:27:28Z

Centre for Internet & Society (CIS) made a submission to the Department of Industrial Planning and Promotion (DIPP) on 7 December 2017.

Centre for Internet and Society, Indiaâ€™s (CIS) Submission to the Department of Industrial Planning and Promotion (DIPP) at Meeting with IP Stakeholders on 07 December, 2017

As the DIPP is aware, the Indian mobile device manufacturing industry is mired in issues related to licensing of standard essential patents (SEPs). Disputes have resulted in imposition of heavy interim royalty rates on Indian manufacturers, payable to foreign SEP holders. Section 146(2) of the Patent Act, 1970 mandates patentees to provide information on working of patents, which is crucial for willing licensees to access patent working information in a timely manner. This requirement, that the details of patent working be disclosed by patentees supports the goal of making unworked patents available for compulsory licensing in India, both to promote economic development and public access to patented products. Penalties for failing to furnish such information (via Form 27) are steep, potentially resulting in fines or imprisonment.
We note that in 2009, 2013 and 2015 the Controller issued public notices calling on patent owners to comply with their obligations to file statements of working on Form 27. Further, on February 12, 2013, the Indian Patent Office (IPO) announced plans to make Form 27 submissions for the year 2012 available to the public via the IPO website.
We commend the efforts of the IPO, however, our empirical research on ICT innovations as well as by Prof. Shamnad Basheer (on ICT and pharmaceutical sector) reveals that there are serious lapses as far as compliance and enforcement of statutory provisions mandating filing of Form 27 are concerned.
In the past year, we studied data available from 2009- 2016 for the mobile device sector, and could only identify and access 4,916 valid Forms 27, corresponding to 3,126 mobile device patents, leavingÂ 1,186 Indian patents for which a Form 27 could have been filed, but was not found. Â For a surprising number of Form 27s (3%) the working status of the relevant patent was not designated.

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

Via our research we also gathered complaints raised by patentees and industry observers regarding the structure of the Form 27 requirement itself. For example, patents covering complex, multi-component products that embody dozens of technical standards and thousands of patents may not necessarily be amenable to the individual-level data requested by Form 27.
Regardless, we submit that these technical difficulties should not hinder the critical statutory requirement placed on patent holders to diligently comply with Form 27 compliance. In the context of licensing of SEPs, several stakeholders recently suggested solutions as revealed from our study of the submissions made to the TRAI Consultation on Promoting Local Telecom Manufacturing:

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

Further, Prof. T Ramakrishna (MHRD Chair on Intellectual Property Rights) at NLSIU, specifically recommended that Form 27 may be amended to include a new column, which may require the patent holder to declare if their patent forms a part of any standard and in case of affirmative answer â€“ the name of the Standard Setting Organisation and corresponding standard of which it is a part.
Further, we would like to draw attention to how our study was limited by the technical capabilities of the Indian Patent Officeâ€™s online Form 27 repository, such as:

IPAIRS returned either a 404 error or Connection Time Out ("site is taking too long to respond") http://ipindiaonline.gov.in/patentsearch/search/index.aspx. In our opinion, it could be redirected to InPASS as it uses the same search engine as InPASS. Â Further, http://ipindia.nic.in/patsea.htm returned a 404 error.
Some PDFs of the forms comprise scanned image files without OCR of the text. This makes them inaccessible to the visually impaired, and prevents search and discoverability of their content. This also makes them less usable by preventing copying and selection of text.
In some cases, it was difficult to identify which one in the list of documents associated with a patent is Form 27, because of obscure filenames.
For example, for Patent Number 262228, Form 27 was named 68.262228.pdf, as found on IPAIRS.
For Patent number 260603, the filename for Form 27 was "ipindiaonline.gov.in_epatentfiling_online_frmPreview.asp.pdf" on IPAIRS.
Inconsistency in search results found on IPAIRS. Searching for the peripheral documents of the patents, returned the results, "No PDF found" for one full week. The next week, the documents started showing. Some searches returned results for an entirely different patent number.
Sometimes, Form 27 found on InPASS was not found on IPAIRS and vice versa.
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We are thankful to DIPP for the opportunity to make these submissions. It would be our pleasure and privilege to discuss these submissions and recommendations in details with the DIPP. We also offer our assistance on other matters aimed at developing a suitable policy framework for SEPs and FRAND in India, and, working towards sustained innovation, manufacture and availability of mobile technologies in India.

On behalf of the Centre for Internet and Society, 07 December, 2017

Anubha Sinha anubha@cisindia.org

Annexure

Complete Data of CIS' Study

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

See Shamnad Basheer, Making Patents Work: Of IP Duties and Deficient Disclosures, 7 QUEEN MARY J. INTELL. PROP. 3, 16-17 (2017).

Supra note 1.

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

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

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

For more details visit https://cis-india.org/a2k/blogs/submission-to-dipp-at-meeting-with-ip-stakeholders

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

sinha — 2017-11-26T02:56:15Z

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

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

Preliminary

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

About CIS

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

Submission on the Issues for Resolution

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Concluding Remarks

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

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

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

[3] www.cis-india.org

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

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

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

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

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

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

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

[10] Id.

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

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

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

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

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

[15] Supra note 11.

[16] Id.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

35th SCCR: CIS' Question to Dr. Rostama on her Study on the Impact of the Digital Environment on Copyright Legislation

sinha — 2017-11-19T07:50:49Z

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

Thank you for the presentation, Dr. Rostamma.

My question relates to provisions allowing reverse engineering of computer programmes. You mentioned that 81% of member states (with the scope of your study) have exceptions for compilation and interoperability of computer programmes.

Can you comment, qualitatively, on how open/ strict you have found the limitations and exceptions to be in your study? Is there a member state that stands out in its treatment of limitations and exceptions for computer programmers, and/or users of such digital objects?

Answer: I would not like to make any qualitative comments.

Read Dr. Rostamma's study here.

For more details visit https://cis-india.org/a2k/blogs/35th-sccr-cis-question-to-dr-rostama-on-her-study-on-the-impact-of-the-digital-environment-on-copyright-legislation

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

sinha — 2017-11-17T10:03:21Z

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

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

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

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

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

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

Thank you.

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

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

sinha — 2017-11-15T13:35:02Z

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

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

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

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

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

Thank you, Mr. Chair.

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