Centre for Internet and Society

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

sinha — 2016-02-22T09:36:52Z

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

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

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

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

I. PRELIMINARY

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

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

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

II. OVERVIEW

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

III. SUBMISSIONS

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

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

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

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

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

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

7.1 Application No.: 112/CHE/2008

Title: Bill payment card method and system

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

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

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

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

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

The invention was rejected.

7.2 Application No.: 48/CHE/2005

Title: Structured approach to software specification

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

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

7.3 Application No.: 2019/CHENP/2004

Title: Apparatus and method of a distributed capital system

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

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

The invention was rejected.

7.4. Application No.: 4986/DELNP/2006

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

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

The invention was rejected.

7.5 Application No.: 1405/MUMNP/2008

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

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

The invention was rejected.

7.6. Application No.: 914/CHE/2007

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

One of the claims read:

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

i. a device having memory;

ii. an input device for entering text;

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

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

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

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

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

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

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

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

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

[3] Ibid.

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

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

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

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

sinha — 2016-02-24T06:30:37Z

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

(n) a presentation of information;

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

CIS' Research and Submissions against Software Patenting

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

Arguments Against Software Patents in India, 2010

CIS Submission on Draft Patent Manual, 2010

Comments on the Draft Guidelines for Computer Related Inventions, 2013

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

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

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

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

Standard Essential Patents on Low-Cost Mobile Phones in India: A Case to Strengthen Competition Regulation?

nehaa — 2016-04-24T04:42:52Z

The realization of the promise of the sub hundred dollar mobile device as a facilitator of access to knowledge is contingent inter alia on its availability in the market place. In turn, the market availability of the sub hundred dollar mobile device is influenced by the existence of an enabling environment for producers to produce, and consumers to consume. From a regulatory perspective, the enabling environment itself is a function of existing laws and policies, and the ‘developmental effects’ of certain laws and policies (Saraswati, 2012).

This article seeks to examine one such legal and policy lever and the role of a regulator in the development of an enabling environment for access to sub hundred dollar mobile devices. This paper is founded on four assumptions: first, that access to sub hundred dollar mobile devices is influenced by their price; second, that the question of access necessitates conversation between the intellectual property regime and several other actors, sites and tools; third, that one of the fundamental goals of regulatory reform is the creation of a ‘stable, open and future- proof environment’ (Guermazi and Satola, 2005) that encourages access to these devices; and fourth, that there exist public law implications of intellectual property that justify the involvement of State actors and regulators in matters that may arise out of private transactions.

This article will examine whether there is a role to be played by competition law in this narrative of innovation, intellectual property and access to sub hundred dollar mobile devices. In light of increasing litigation around standard essential patents, and the inability of FRAND and International Standard Setting Organizations to find a comprehensive solution, this paper will question the efficacy of competition law as an ex post solution to a problem that might be better addressed by ex ante regulation from a specialized body.

In an attempt to address these questions, this article will examine the role of the Competition Commission of India and the Indian Judiciary. Orders of the Competition Commission will be studied from its inception till March, 2015, in order to draw conclusions about the role that the Commission identifies for itself and the nature of disputes it adjudicates. This article will also examine the role of similarly placed institutions in the United States of America as well as some member states of the European Union.

It will be argued that while Competition Law might address some of the issues arising out of litigation around standard essential patents, and might be a tool to increase access to sub hundred dollar mobile devices, its efficacy as a long term solution in light of its nature as an ex post solution, is questionable. Consequently, it might be prudent to have a conversation leaning towards exante regulation of the market place by a specialized regulator.

The paper was published by Socio Legal Review (National Law School of India University). Download the PDF here.

For more details visit https://cis-india.org/a2k/blogs/the-socio-legal-review-nehaa-chaudhari-standard-essential-patent-on-low-cost-mobile-phones-in-india

CIS RTI REQUEST TO DIPP - NUMBER 1 - FEBRUARY, 2015

nehaa — 2015-04-14T17:17:53Z

For more details visit https://cis-india.org/a2k/blogs/cis-rti-request-to-dipp-number-1-february-2015

Patent Working Requirements and Complex Products: An Empirical Assessment of India's Form 27 Practice and Compliance

rohini — 2017-10-13T04:32:49Z

India requires every patentee to file an annual statement, also known as “Form 27”, describing the working of each of its issued Indian patents. If a patent is not locally worked within three years of its issuance, any person may request a compulsory license, and if the patent is not adequately worked within two years of the grant of such a compulsory license, it may be revoked. The research paper on Form 27 practices and compliance by patentees authored by Prof Jorge L. Contreras, University of Utah, and Rohini Lakshané, Centre for Internet and Society has been accepted for publication in the NYU Journal of Intellectual Property and Entertainment Law.

The research paper by Prof Jorge L. Contreras, University of Utah, and Rohini Lakshané, Centre for Internet and Society was published on SSRN on July 17, 2017. The paper has been accepted for publication in the NYU Journal of Intellectual Property and Entertainment Law.

The potency of India’s patent working requirement was demonstrated by the 2012 issuance of a compulsory license for Bayer’s patented drug Nexavar. In order to provide the public with information about patent working, India requires every patentee to file an annual statement on “Form 27” describing the working of each of its issued Indian patents.

We conducted the first comprehensive and systematic study of all Forms 27 filed with respect to a key industry sector: mobile devices. We obtained from public online records 4,916 valid Forms 27, corresponding to 3,126 mobile device patents. 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. Patentees adopted drastically different positions regarding the definition of patent working, while several significant patentees claimed that they or their patent portfolios were simply too large to enable the reporting of required information. Many patentees simply omitted required descriptive information from their Forms without explanation.

The Indian government has made little or no effort to monitor or police compliance with Form 27 filings, undoubtedly leading to significant non-compliance. However, some of the complaints raised by patentees and industry observers may have merit. Namely, that 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. We hope that this study will contribute to the ongoing conversation in India regarding the most appropriate means for collecting and disseminating information regarding the working of patents.

Download the Paper

For more details visit https://cis-india.org/a2k/blogs/patent-working-requirements-and-complex-products-an-empirical-assessment-of-indias-form-27-practice-and-compliance

Comparison of National IPR Strategy September 2012, National IPR Strategy July 2014 and Draft National IP Policy, December 2014

amulya — 2016-03-08T01:49:07Z

This is an analysis of the first draft of India's National IPR Policy with an earlier document "India's National IPR Strategy".

Nehaa Chaudhari provided inputs, analysed, reviewed and edited this blog post.

As part of our IPR Policy Series, we have so far CIS has submitted comments to the Department of Industrial Policy and Promotion on the proposed IPR Policy and the first draft of the National IPR Policy, traced the development of the National IPR Policy, evaluated how the IPR Policy holds up to WIPO’s suggestions , filed RTI’s regarding the formation of the IPR Think Tank and the functioning of the Sectoral Innovation Council.

In this blog post Amulya.P compares the National IPR Strategy September 2012 prepared by the Sectoral Innovation Council, the National IPR Strategy July 2014 and the Draft National IP Policy, December 2014 to understand the commonalities and differences between the three.

Vision/ Mission

The vision stated in the IPR Strategy, July 2014 is “To develop India during the decade of Innovation into a major Innovative competitive and knowledge based economy by strategic utilization of IP as an engine for accelerated growth and sustainable and inclusive development.” This is comparable to the vision statement laid out in the Draft National IP Policy, December 2014 (Draft Policy) that states as follows: “An India where IP led growth in creativity and innovation is encouraged for the benefit of all; an India where IPRs promote advancement in science and technology, arts and culture, traditional knowledge and bio-diversity resources; an India where knowledge is the main driver of development, and knowledge owned is transformed into knowledge shared.” The Mission Statement laid out in the Draft Policy reads as follows “Establish a dynamic vibrant balanced intellectual property system in India to : foster innovation and creativity in a knowledge economy, accelerate economic growth, employment and entrepreneurship, enhance socio-cultural development and protect public health, food security and environment among other areas of socio-economic importance”

Clearly the Draft Policy strives for more balance and envisions IPRs as not only a tool to ensure social welfare alongside economic growth, but also envisions IPR as a tool to ensure the sharing of knowledge.

Objectives/ Approaches

The objectives of both the September 2012 National IPR Strategy and the July 2014 National IPR Strategy are more or less to “ Transform India into an innovative economy that would be reflected in high rankings in development and innovation indices from a global standpoint and develop, sustainable and innovation-promoting IPR management system in India while ensuring that the IP system continues to have appropriate checks and balances conducive to social and economic welfare and to a balance of rights and obligations. Besides measures that need to be taken, the strategy also needs to have an implementation matrix and a time bound schedule.”

In addition to this, the September 2014 IPR Strategy Document lays down a four pronged approach- to promote respect for IP, to simulate creation of IPRs ,creation of new IP regimes to address needs of the country and strengthening protection of IP, and to facilitate commercialization of IP. The IPR Strategy of July 2014 expands on this to include the establishing of cost effective, efficient, service oriented administration, institutional capacity building and development of human capital and the integrating of IP components of national sectoral policy and the Addressing of IP issues in international fora.

The Draft Policy though has enumerated seven objectives throughout the report. They are: a) “To create public awareness about economic social and cultural benefits of IP among all sections of society for accelerating development, promoting entrepreneurship, enhancing employment and increasing competitiveness”.b) “To stimulate creation of growth of IP through measures that encourage IP generation.”c) “To have strong and effective laws with regard to IPRs that are consistent with national priorities and international obligations which balance the interests of rights owners with public interest.” d) “To modernize and strengthen IP administration for efficient, expeditious and cost effective grant and management of IP rights and user oriented services.” e) “To augment the commercialization of IP rights, valuation licensing and technology transfer.” f)”To strengthen the enforcement and adjudicatory mechanisms for combating IP violations, piracy and counterfeiting, to facilitate effective and speedy adjudication of IP disputes to promote awareness and respect for IPRs among all sections of society.” f) “To strengthen and expand human resources, institutions and capacities for teaching, training, research and skill building in IP.”

Clearly the Draft Policy lays more emphasis on raising public awareness about the benefits of IP, strengthening the enforcement and adjudicatory mechanisms to combat violations and on balancing different interests during the creation of new IP laws and regulations.

Raising Awareness

While the September 2012 IPR Strategy speaks of raising awareness as a tool in encouraging creation of IP and facilitating commercialization of IP, the Draft Policy envisions an elaborate awareness raising and publicity program. Some of the schemes suggested in the Draft Policy include: Adoption of the slogan “Creative India: Innovative India” and launching an associated campaign on electronic , print and social media by linking IPRs and other national initiatives such as Make in India, Digital India, Skill India and Smart Cities. Reaching out to industry, MSMEs, R&D institutions, science and technology institutes, universities, colleges, inventors, creators, farmers/plant variety users, traditional knowledge holders, designers and artisans through campaigns tailored to their needs and concerns. Promoting the idea of high quality and cost effective innovation as a particularly Indian competence leading to competitive advantage, Involving of eminent personalities as ambassadors to spread awareness of India’s IP, Using audio visual material in print/electronic/social media for propagation, Creating moving exhibits that can travel to all parts of the country, Establishing Innovation and IPR museums, announcing a National IPR day and celebrating world IPR day etc.

The Draft Policy has a much more elaborate program for awareness raising and publicity and this is reflected throughout the document with almost every stakeholder and department being involved in the awareness programme.

MSMEs

The July 2014 IPR Strategy and the September 2012 IPR strategy both call for very similar policies with regard to MSMEs. Both lie emphasis on educating and incentivizing MSMEs to create new IP and formalize existing ones, on government intervention in setting up IP facilitation centers to bring about collaboration between the facilitation centers and the activities of existing industrial clusters, provision of access to databases on patent and non-patent literature to enable prior art research to IITs and NITs free of cost so that they can assist MSMEs or individuals with determining novelty in their inventions free of cost and other provide assistance with the patent application for a fee. While the September 2014 strategy called for identifying such institutions, the July 2014 Strategy does. Both of these strategies however, call for favorable tax treatments toward MSMEs for R&D Expenditures. Both also call for support mechanisms to offset IP costs and facilitate technology transfer through in-licensing from publicly funded research.

The Draft Policy discusses MSMEs in less detail, but still calls for creation of educational materials for MSMEs and highlighting special mechanisms for them to develop and protect IP, encouraging IP creation by establishing and strengthening IP facilitation centers especially in industrial and innovation university clusters, Introducing “first-time patent” fee waiver and support systems for MSMEs and reduce transaction costs in other ways (e.g. prior art search). It does not specifically mention favorable tax treatment to MSMEs or access to databases to determine novelty or provision of assistance with patent application or call for government intervention to better the IP facilitation centers.

Academia and Research Organisations

The July 2014 IPR Strategy and the September 2012 IPR strategy again recommend similar strategies when it comes to academia and research organisations. They both recommend some sort of education/awareness rising targeted at researchers and innovators regarding precautions to be exercised before patent application such as not selling inventions to company at early stages / not publishing research to public etc. they also recommend promoting university startups to motivate scientists to take up technology ventures. They both promote encouraging IITs and other similar institutions to undertake research on national issues like poverty, health, food, security, energy, information technology, bio-technology etc. They both recommend that IP creation be a key performance indicator for universities and institutions that participate in publicly sponsored/collaborative research and development and that this be gradually introduced in Tier 1 and Tier 2 institutions. And finally they both recommend that basic concepts of IP creation and respect for IP as part of formal education at school/college/university/vocational level including a course on IPR that is to be included in the curriculum of all technical programmes recognized by AICTE and in post grad/research programme in science and applied fields in universities.

The Draft Policy recommends all this and more. It recommends the formulation of institutional IP policy/strategy in higher education, research and technical institutions. Even though it recommends educating researchers and innovators regarding IP and precautions to be taken with respect to protecting their invention before publishing, it doesn’t go into detail or state that there is a need to protect against inventions being sold prematurely to companies. The Draft Policy also recommends that public funded research organisations and private sector are to be tapped to create campaigns highlighting the process of IPR creation and the value generated therefrom. It also recommends that IITs NITs etc. be encouraged to focus on research in areas such as nanotechnology, data analytics and ICT in addition to areas such as food security, healthcare and agriculture. Further in addition to creating educational material about IPR at school and university levels, the Draft Policy also calls for online and distance learning programs for all categories of users that focus on IPR. And for IP courses/modules to be introduced in all major training institutes such as judicial academies, National Academy of Administration, Police and Customs Academies, IIFT, Institute of Foreign Service Training, Forest Training Institutes etc., creating IPR cells and technology development and management units in such institutes. The Draft Policy also recommends that IPR be a compulsory subject in all legal educational institutions, NIDs NIFTs, agricultural universities and management institutes, and making IP teaching a part of accreditation mechanism in institutes under the purview of UGC, AICTE MCI as well as IITs and IIMs.

Large Organisations

The September 2012 IPR Strategy recommends that the government encourage large organisations to take a long term view of R&D and make research investments to create strong self-reliant tech portfolio and also acquire the scale to build strategic global positions, it recommends that the government encourage these organisations to share their expertise and resources for national benefit through PPPs, development of high technology base requires strategic relationships with overseas players, it recommends that it be made mandatory for MNCs to align with innovation strategy and the National Innovation systems and that the MNCs be encouraged by the state to leverage their standing and reach to ensure inflow of best practices and investments.it also recommends sops and preferential treatment in public contracts to large Indian organisations with a strong culture of IP creation. And that these organisations be encouraged to tap open innovation platforms and tie ups with academia. The July 2014 IPR Strategy recommends more or less the same strategies with regard to large organisations.

The Draft Policy recommends that public funded research organisations and private sector be encouraged to create campaigns highlighting the process of IPR creation and its value, that MNCs and large organisations develop IPR programs for their employees, that government encourage large organisations to create, protect and utilize IP in India and that the government create an industry-academia interface for encouraging cross-fertilization of ideas and IPR driven research and innovation in jointly identified areas. It makes no mention of requiring large organisations to align with the National IPR Policy, to ensure best practices but also doesn’t particularly mention tax cuts or other sops to encourage large organisations with a strong IP culture. The Draft Policy makes no mention at all of open innovation platforms. In large parts the Draft Policy is vague and lacks specifics with regard to strategies toward large organisations.

Startups and Individuals

The September 2012 IPR Strategy and the July 2014 IPR Strategy both make separate recommendations aimed at startups and individuals. They both recommend that information on the delivery mechanism for support services including things like venture capital funding should be made expedient and that identified public institutions should offer end to end support for creation, protection and commercialization of IP. The September 2012 Strategy also recommends that procedural mechanisms adopted for giving financial support for patent filing should be made smoother and that the assistance provided should be improved. The Draft Policy does not include any specific recommendations with regard to start ups or individuals apart from involving them in the publicity/awareness campaigns. In this measure the Draft Policy seems to fall short.

Strengthening IP Protection/ Creating New IP Regimes

The September 2012 IPR strategy generally called for improvement in institutions that grant IPRs and in institutions that are responsible for its enforcement and expansion of rights to include new IPRs.

The July 2014 IPR Strategy had a significant advance to this and recommended periodic review and streamlining procedures and process and guidelines for search, grant examination, maintenance and registration of IPRs in consultation with relevant stakeholders and benchmarked with best practices. It also recommended that full benefit be taken of global protection systems of WIPO, Patent Cooperation Treaty, Madrid System for International Registration of Marks etc. and that consequent upon amendment in 2012 of the Copyright Act, 1957, consideration be given to acceding to the Marrakesh Treaty for the blind, that avenues for international cooperation in IPR be studied. And finally it recommended that with respect to traditional knowledge and grant of patents in other countries, the Nagoya protocol is a step in the right direction and while the Patents Act, 1970, Biological Diversity Act, 2002 and the Plant Variety Protection and Farmers Rights Act, 2001 address the issue, a sui generis system of protection to check misappropriation is required at the international level.

The Draft Policy generally recommends that there be a review of existing IP laws to update and improve them and remove any inconsistencies, a review of IP related rules and procedures etc. to ensure clarity, simplification, streamlining, transparency and time bound process in administration and enforcement of IP rights. The Draft Policy also recommends that the government actively engage in negotiating international treaties and agreements in consultation with stakeholders, examine accession to some multilateral treaties that are in the countries interest and become a signatory to those treaty that India has defacto implemented so that India can participate in their decision making process. The central problem here is of course that what is in the countries interest may be open to debate, the Draft Policy does not at any point for example indicate whether or not the Government would consider taking on TRIPS plus obligations, the Draft Policy does not clarify what the Governments general stance on such issues would be.

The Draft Policy further recommends that important areas of study and research for future policy development be identified, some examples provided are: a) Interplay between IP laws and other laws to remove ambiguities or inconsistencies, b) Interface between IP and competition law and policy, c) Protection of undisclosed information not extending to data exclusivity, d) Guidelines for authorities whose respective jurisdictions impact the administration or enforcement of IPRs such as patents and bio-diversity, e) Exceptions and limitations and f) Exhaustion of IP rights. A prominent concern here would be data exclusivity, while the policy uses vague language and only wants these issues to be studied, Data exclusivity among others are demands made by the EU and others in Free Trade Agreements that go beyond our obligation under TRIPS and could harm the public interest.

Establishing Cost Effective, Efficient and Service Oriented IP Administrative Infrastructure

The July 2014 IPR Strategy recommends that IPOs be restructured to aim for ISO 9002 model to increase efficiency, quality and cost effectiveness; that after a review of the need of human resources to enable IPOs to discharged workload efficiently the required amount of manpower be employed; that recruitment training and career development of officials has to be reviewed to recruit and retain best personnel in the IPO; that the possibility of providing advisory services and value added products be studied; and recommends that there should be cooperation with IPOs in other countries in the area of capacity building, human resource development and awareness.

The Draft Policy recommends that IPOs be restructured, upgraded and be granted greater responsibility and autonomy taking into account the rapid growth and diversity of IP users and services, it also recommends an increase in manpower according to findings after a review to ensure speedy liquidation of backlog, requirements of global protection systems and productivity parameters. And that the process of recruitment training, cadre structure and career development of officials be studied and reviewed to retain the best talent to enhance efficiency and productivity. The Draft Policy also recommends that the government collaborate with R&D institutions universities, funding agencies, chambers of industry and commerce in providing advisory services which will improve IP creation and management and utilization, promote cooperation with IP offices in other countries in areas of capacity building, HRD, training, access to databases, best practices in search and examinations, use of ICT and user oriented services, enhance international and bilateral cooperation and post IP attaches in select countries to follow IP developments and advice on IP related matters.

Office of CGPDTM

The September 2012 IPR Strategy recommended that Grant/registration procedure to be quickened through recruitment and increasing human resources, that the functioning of IPOs be improved by measures such as: complete digitization of IP records and uploading for public view to improve transparency, communication with applicant/agents to be improved to bring in transparency meticulousness, database to be made searchable so that researchers can conduct effective searches to identify state of the art technology, electronic filing of applications and subsequent examination through electronic mode to be mandatory, Increase in filing fee with specific discounts for identified sectors such as MSEs.

The 2012 IPR Strategy observed that the quality of examination of IP applications needs to be improved and suggested reassessment of procedures followed in IPO to reduce timelines toward statutory actions.

The July 2014 IPR Strategy recommended that the grant and registration procedure be quickened through recruitment and increasing human resources, and that there be regular meetings between the CGPDTM and the National Biodiversity Authority to resolve issues that arise from implementing guidelines about grant of patents on inventions using genetic resources and TK.

The Draft Policy recommended that the government establish close cooperation between IPOs and create a common web portal for ease of access to statutes regulations, guidelines, databases and for better coordination.

The Draft policy also recommended that the CGPDTM examine joining centralized access for search and examination (CASE) and WIPO digital access services (DAS), that the CGPDTM fix and adhere to timelines for grant of registration and disposal of opposition matters, create a service oriented culture, include appointing public relations officers who would make the IP office user friendly, that the CGPDTM conduct periodic audits of processes being adopted in IP administration for efficient grant and management of IP rights.

The Draft Policy also recommended that the CGPDTM implement quality standards at all stages of operations with the aim to obtain ISO certification and adopt best practices with respect to filing and docketing of documents, maintenance of records and digitizing the same including document workflow and tracking systems, and take steps to expedite digitization of the design office and enable online search and filing in the design office

The Draft Policy also recommended that the CGPDTM ensure that public records in IP office are easily available and accessible both online and offline and establish effective coordination between its office and NBA to enable harmonious implementation of guidelines relating to grant of patents on inventions using genetic resources and associated TK, that the CGPDTM remove disparities among different branches of the trademark registries and patent offices and adopt standardized procedures in examination/grant of applications including maintenance of rights, implement centralized priority field wise on a national basis and provide value added services in form of helpdesks, awareness and training materials, patent mapping, licensing and technology transfer support services, ease of remote access of the international patent search mechanisms and other IP related databases. And that the CGPDTM implement incentives for MSMEs to encourage filing by the said sector like waiver of official fee, support of examiners and pro-bono legal help for the first time filing.

Administrative Departments of Other IP Institutions

The September 2012 IPR Strategy and the July 2014 IPR Strategy both generally recommended that the administrative departments of other IP institutions also take up similar actions as the CGPDTM.

The Draft Policy however, goes into this with some detail. The Draft Policy recommends that with regard to the office of Registrar of Copyright, the Government take measures to expedite modernization of the office both in terms of office space and infrastructure and in terms of introducing e filing facility including e- applications, electronic processing and issuance of final extracts of registrations etc. It also recommends that all copyright records be digitized and that the government introduce an online search facility and provide necessary manpower and adequate training facilities to personnel in the copyright office. It further recommends that the government take urgent measures for the effective management and administration of copyright societies to ensure transparency and efficiency in the collection and disbursement of royalties in the best interests of rights holders and that the government provide user friendly services in the form of help desks, awareness raising and training materials.

The Draft Policy recommends that the registrar of Semiconductor Integrated Circuits Layout Design study the reasons for lack of interest in filings under the Semiconductor Integrated Circuits Layout Design Act, 2000 and suggest appropriate measures. The Draft Policy also recommends that the government formalize a consultation and coordination mechanism between the National Biodiversity Authority and the IPOs with a view to harmonious implementation of guidelines for grant of IP rights and access to biological resources and associated traditional knowledge and benefit sharing.

Institutional Capacity Building

The July 2014 IPR Strategy recommended that the RGNIIPM act as a think tank, carry out research on IP matters, formulate and deliver training courses and develop teaching curricular for academic institutions, develop linkages with other national and international institutions involved in similar fields and develop joint training programs and conduct joint research studies on IPRs including programs for plant variety protection and issues related to traditional knowledge and bio resources. And establish IP institutes with state governments for raising awareness and training and teaching.

It also recommended that the MHRD IPR chairs provide support to all ministries and departments in policy making law making and negotiations under bilateral or multilateral frameworks. The Strategy also recommended that institutes responsible for training customs, police, judiciary, forest research institutes have IP training as an essential part of the curriculum, that National level institutes associated with creation enforcement or commercialization should be encouraged to incorporate IP training and capacity building in their operations and finally that industry, business, IP professional bodies, inventers associations, venture capital funds etc. should be encouraged to develop IP training modules for their members as well.

The Draft Policy recommends all this and more and suggests that RGNIIPM Nagpur conduct training for IP administrators , managers in the industry, academicians, R&D institutions, IP professionals, inventors, civil society apart from training the trainers, developing training modules and links with other similar entities at the international level and set up state level institutions. Further it recommended that the MHRD IPR Chairs provide high quality teaching and research, develop teaching capacity and curricula and evaluate their work on performance based criteria.

The Draft Policy also recommends that the CGPDTM provide continuous training to the IPO staff and update them with developments in procedures, substantive laws and technologies along with the RGNIIPM.

The Draft policy also recommends that the government establish national level institutes of excellence to provide leadership in IP, conduct policy and empirical research, examine trends and developments in the field of IP at the national and international level, support the government in strategic development of IP systems and international negotiations, establish links with similar institutes and experts in other countries for exchange of ideas, information and best practices and suggest approaches and guidelines for inter-disciplinary human capital development. And that the government facilitate industry associations, inventors and creators associations and IP support institutions to raise awareness of IP issues for teaching, training and skill building.

Strengthening Institutional Set-up to Improve Enforcement of IPRs and Create Respect for IPRs

The September 2012 IPR Strategy and the July 2014 IPR Strategy both recommend that the government encourage small and niche businesses to protect their products through trademarks, the September 2012 Strategy also adds that these businesses should be encouraged to seek international protection to participate in global competition and contribute to international trade activities. The Draft Policy recommends increasing awareness of international mechanisms and treaties (e.g. PCT, Madrid and The Hague) to encourage creation and protection of IP in global markets.

The 2012 IPR Strategy and the July 2014 Strategy go into further detail, they recommend that the service sector be encouraged to adopt strategies for registration of trademarks to ensure competitiveness and to leverage the goodwill of strong indigenous brands that have acquired traction in international markets. They also recommend that SME clusters be encouraged to develop a comprehensive database of their products to ensure that a parent isn’t issued on unprotected innovations.

As far as GI is concerned, both the July 2014 and the September 2012 IPR Strategy recommend that central public bodies such as the development commissioner for handicrafts and handlooms etc. partner with the suitable state, district and Panchayat level entities to educate communities on the benefits of registering GIs, to put in place examination protocols to ensure GI owners comply with quality standards. They further recommend that these bodies develop a roadmap to build brands for better market presence for products registered as GIs and coordinate with relevant state authority on enforcement and provide periodical updates to enforcement taskforce on issues that need redressal.

The Draft Policy only recommends that the government encourage registration of GI through support institutions and assist GI producers to define and maintain acceptable quality standards and providing better marketability.

As far as designs are concerned, both the July 2014 IPR Strategy and the September 2012 IPR Strategy recommend that the government encourage a move from informal to formal practices of protecting designs by administrative intervention, while the Draft Policy recommends the encouraging of creation of design related IP rights by identifying, nurturing, and promoting aspects of innovation protectable under the design law and educating designers to utilize and benefit from their designs , involve the NIDs , NIFTs and other institutions in sensitization campaigns.

With regard to plant varieties, both the 2014 and 2012 IPR Strategies recommend awareness generation programmes to encourage filings of new extant and essentially derived varieties. While the 2012 IPR Strategy further stated that there was a need to evaluate whether restructuring institutions/merging all IP issues under one umbrella would improve efficiency and a need for centrally managed National IP Enforcement Taskforce that could :a) Maintain database on criminal enforcement measures instituted for trademark infringement and copyright piracy, civil cases filed to be collated also, b) Mandated to deliberate upon operational issues of enforcement with the concerned Central and State agencies, c) Conduct periodic industry wise infringement surveys d) Coordinate capacity building programmes for the central and state enforcing agencies.

The Draft Policy recommends that the protection of plant varieties and farmers rights authority should: a) Support increased registration of new, extant and essential derived varieties and streamline procedures, b) Facilitate development of seeds and their commercialization by farmers., c) Establish links with agriculture universities, research institutions, technology development and management centers and Krishi Vikas Kendras, d) Coordinate with other IPOs for training sharing expertise and adopting best practices, e) Augment awareness building, training and teaching programs and modernize office infrastructure and use of ICT.

With regard to Traditional Knowledge, the Draft Policy also recommends that the government create a sui generis system for protecting TK which will safeguard misappropriation of traditional knowledge as well as promote further research and development in products and services based on traditional knowledge.

Creation of New IP Rights to Address Gaps

The September 2012 IPR Strategy recommended protection of utility models, utility patents as they have Protection of utility model. Utility patents / models proposed as they have less stringent patentability criteria, faster examination/grant, shorter term of protection as a cost effective way to incentivize incremental innovation and encourage creation of IPRs, with sector specific exemptions to ensure TRIPS compliance. And included a proposal for a predictable recognizable trade secret regime to improve investor confidence and facilitate flow of information.

The Draft Policy also recommended that the government facilitate creation and protection of small inventions through a new law on utility models, enact laws to address national needs to fill gaps in protective regimes of IPRs such as utility models and trade secrets to keep up with advancements in science and technology to strengthen IP and innovation ecosystem from example IP created from public funded research, to protect and promote traditional knowledge. As pointed out in the CIS Submission to the IPR Think Tank, the creation of utility models should by no means be assumed to be completely uncontroversial, many countries that had this system have now given it up, further this could lead to granting of frivolous patents and thereby harming development.

Facilitating Commercialization of IPRs

Both the July 2014 and the September 2012 IPR Strategies have similar recommendations with respect to facilitating commercialization of IPRs; they both recommend policy interventions to create strong and transparent national strategies to encourage: licensing of rights to another entity for commercialization, cross licensing agreements, leveraging the intellectual assets for future R&D growth and improved services, sale merger acquisition of either IPR or entire business distinguished and appropriately valued by their intellectual capital, patent pooling, reinforcing stability of IP license contracts.

And they both recommend that National research laboratories and academia and public institutions to stimulate commercialization of research resultants: intervention in building strengthening institutional capacity of research led organisations to enable utilization of IP.

The 2012 IPR Strategy also recommends national level policy changes to encourage development of indigenous technologies, that government fund (grants/loans) demonstration projects of new technologies that require large investment, suitable tax breaks for indigenously developed and commercialized products till attainment of some maturity levels, that qualification requirements during tendering process to accord acceptance to indigenously developed products where heavy development investments have been incurred, strengthening the indigenous R&D ecosystem policy frameworks should provide for flexibility in outsourcing technical expertise in niche areas and type testing of prototypes. Further it visualizes the emergence of open innovation systems and the role of voluntary SSOs.

The Draft Policy does all this and more. It recommends that the government establish an IP Promotion and Development Council (IPPDC) as a nodal organization for promotion and commercialization of IPR, the IPPDC is supposed to, among other things, promote licensing and technology transfer of IP, devise suitable contractual and licensing guidelines to enable commercialization of IP, promoting patent pooling and cross licensing to create IP based products and services and also establishing links with similar organisations for exchange of information and ideas as also to develop promotional educational products and services for promotion and commercialization, to facilitate access to databases on Indian IP and global databases of creators/innovators, market analysts, funding agencies, IP intermediaries, to study and facilitate implementation of best practices for promotion and commercialization of IP within the country and outside. IPPDC to establish IP Promotion and Development Units (IPPDU) in various regions The IPPDC is also tasked with identifying opportunities for marketing Indian IPR based products and services to a global audience.

The government is also recommended to provide statutory incentives like tax benefits linked to IP creation for the entire value chain from IP creation to commercialization, to support financial aspects of IP commercialization by: a)Enabling valuation of IP rights by application of appropriate methodologies including for better accounting as intangible assets, b) Facilitating investments in IP driven industries and services through the proposed IP exchange for bringing investors/funding agencies and IP owners /users together, c) Providing financial support to less empowered groups of IP owners or creators like farmers weavers, artisans, craftsmen etc. through financial institutions like rural banks or cooperative banks offering IP friendly loans, d) Taking stock of all IP funding by the government and suggesting measures to consolidate the same to the extent possible generating scale in funding and avoiding duplication, enhancing the visibility of IP and innovation related funds so that utilization is increased, performance based evaluation for continued funding, c) Regulating IP created through publicly funded research by a suitable law.

The Draft policy also recommends that the government promote going to market activities by: a) Creating mechanisms to help MSMEs and research institutions to validate scale and pilot through market testing, b) Providing seed funding for market activities such as participating in trade fairs, industry standards bodies and other forums, c) Providing guidance and support to IPR owners about commercial opportunities of e commerce through internet and mobile platforms. And that the government study the role of IPRs in setting standards in various areas of technology, actively participate in standards setting processes at national, international and industry SSO levels and to encourage the development of global standards that are influenced by technologies and IP generated in India

Facilitating and Encouraging Commercialization of IP Assets

The July 2014 IPR Strategy had specific recommendations to make in this regard. It recommended that the government forge links between creators and inventors , universities, industry and financial institutions for commercialization, that the government establish an IP exchange to stimulate trading of IP and creating markets for IP assets, to facilitate MSMEs to identify protect and commercialize their IP, creations through facilitation centers by providing package of services, to encourage technologies acquired under the patent pool of the Technology Acquisition and Development Fund (TADF) and licensed as per provision in manufacturing policy.

The Draft IP policy recommends all of these, tasking the IPPDC with most of these tasks and also recommends that the government improve awareness of the value of copyright for creators, the importance of their economic and moral rights and the rationalization of payment mechanisms for them, and to support initiative taken by public sector research entities to commercialize their IPRs for commercialization and lastly to develop skills among scientists to access , interpret and analyze the techno-legal and business information contained in IP documents.

Enforcement and Adjudication

The Draft Policy makes very specific recommendations with regard to enforcement and adjudication, apart from suggestions that go toward creating awareness and sensitizing the public, students, industry and inventors about IP, the policy also recommends that the government establish a Multi-Agency Task Force for coordination between various agencies and providing direction and guidance on enforcement measures, creating a nationwide database of known IP offenders, coordination and sharing intelligence and best practices at the national and international levels, studying the extent of IP violations in various sectors, examining the implications of jurisdictional difficulties among enforcement authorities and introducing appropriate technology based solutions for curbing digital piracy.

The government is also tasked with working with state governments in establishing IP cells and including IP crimes under their special laws, increasing manpower and infrastructure of the enforcement agencies and building capacity to check proliferation of digital crimes, providing regular training for officials in enforcement agencies, encouraging application of tech-based solutions in enforcement of IP rights, initiating fact finding studies in collaboration with stakeholders concerned to assess the extent of counterfeiting and piracy and the reasons behind it as well as the measures to combat it and taking up the issue of Indian works and products being pirated and counterfeited abroad with countries concerned.

On improving IP dispute resolution, the Draft Policy recommends the designation of specialized patent bench in the High Courts of Bombay, Calcutta, Delhi and Madras, the designation of one IP court at the district level depending on the number of IP cases filed, working with judicial academies to conduct regular workshops for judges, promoting ADRs in the resolution of IP cases by strengthening mediation and conciliation centers and developing ADR capabilities, creating regional benches of the IPAB in all five regions where IPOs are located, increasing the powers of IPAB in its administration including autonomy in financial matters and selection of technical and judicial members and providing necessary infrastructure for its effective and efficient funding and also taking urgent steps to make the copyright board function effectively and efficiently and provide adequate infrastructure and manpower to it.

Work Plans

In addition to all of the above, the July 2014 IPR Strategy also recommends a work plan which includes commissioning a study on schemes and programs financed by the government including under the PP mode for innovation, signing and acceding to the Marrakesh Treaty, the NICE agreement on international classification of goods and services for the purpose of registration of trademarks, assessing the Hague Agreement regarding registration of industrial design vis a vis India’s Designs Act with a view to accede to the treaty, assessing the possibility of accepting facilitation centers run by universities/academic institutions/departments of science and technology as receiving offices for patent applications where there are no patent offices.

The Draft IP Policy also makes recommendations to integrate IP with other government Initiatives like Make in India and Digital India, and plans to integrate into these government initiatives the different schemes of the Department of Electronics, and IT for IP promotion and global protection. It further recommends the establishing of a high-level body in the government to co-ordinate, guide and oversee the implementation and development of IP in India in accordance with the National IP Policy. The body will be responsible for bringing cohesion and coordination among different ministries and departments with regard to how they deal with IP matters, laying down priorities for IP development and preparing plans of action for time bound implementation of national and sector specific IP policies, strategies and programs, monitoring the progress and implementation of the National IP policy linked with performance indicators, targeted results and deliverables, annual evaluation of the overall working of the policy and a major review of the policy ever three years.

Concluding Observations

The National IPR Strategies of 2012 and 2014 contain more or less similar recommendations, the key differences being that the 2014 IPR Strategy emphasizes the need to address IP issues in international fora and in establishing cost effective, efficient and service oriented IP administrative infrastructure. It does not, in contrast to the 2012 IPR Strategy, recommend the introduction of laws on utility models or protection of trade secrets, policy changes to encourage development of indigenous technologies, but it does more specifically address facilitating commercialization of IP.

The Draft Policy is an important advance over the National IPR Strategy of July 2014 and September 2012. It places makes important new recommendations with regards to publicity and awareness raising, creation of legal regime with regard to traditional knowledge, utility patents and trade secrets, enforcement and adjudication- including the setting up of new courts, creation of the IPPDC and of a new high-level government body to oversee the implementation of the policy. It does however miss out on the chance to help start-ups, MSMEs and individuals in contrast to recommendations of the previous IPR Strategies. And in context of its avowed aim to turn knowledge owned into knowledge shared does little to encourage open access and focuses heavily on IP creation assuming that increase in IP would promote innovation and thereby lead to national development.

Table - Comparison of National IPR Strategy September 2012, National IPR Strategy July 2014 And Draft National IP Policy, December 2014

Sectoral Innovation Council, National IPR Strategy, September 2012, Available at: http://dipp.nic.in/english/Discuss_paper/draftNational_IPR_Strategy_26Sep2012.pdf (Hereafter : National IPR Strategy, September 2012)

National IPR Strategy, July 2014, Available at: http://dipp.nic.in/English/Schemes/Intellectual_Property_Rights/national_IPR_Strategy_21July2014.pdf (Hereafter: National IPR Policy, July 2014)

IPR Think Tank, Draft National IP Policy, December 2014, Available at: http://dipp.nic.in/English/Schemes/Intellectual_Property_Rights/IPR_Policy_24December2014.pdf (Here after: Draft Policy)

National IPR Strategy, July 2014, p.5

Draft Policy, p.5

[5] National IPR Strategy, July 2014, p.5

Draft Policy, p.5

National IPR Strategy, September 2012, pp.11 and Draft Policy, December 2014, pp.5

National IPR Strategy, September 2012, pp.11

National IPR Strategy, July 2014, pp.5-6,

Draft Policy, p.6,

Draft Policy, p.8.

Draft Policy, p.11.

Draft Policy, p.13.

Draft Policy, p.17.

Draft Policy, p.20.

Draft Policy, p.23.

National IPR Strategy, September 2012, pp. 7, 11, 12, 19 20

National IPR Strategy, September 2012, pp. 21

Draft Policy, p.6-8

National IPR Strategy, September 2012, pp.6-7 , 12-13 and National IPR Strategy, July 2014 , pp.6-8

Draft Policy, p.5, 9-10, 15,18-19

National IPR Strategy, September 2012, pp. 7, 13-14 and National IPR Strategy, July 2014 , pp.8-9.

Draft Policy, p.8,11,24

National IPR Strategy, September 2012, pp.6, 14-15 and National IPR Strategy, July 2014 , pp.9-10

Draft Policy, p.7-8, 10

National IPR Strategy, September 2012, pp. 7, 15 and National IPR Strategy, July 2014 , pp.10

National IPR Strategy, September 2012, pp. 7, 15

National IPR Strategy, September 2012, pp. 15

National IPR Strategy, July 2014 , pp.10-12

Draft Policy, p.12-13,

Draft Policy, p.13

Swaraj Paul Barooah, Data Exclusivity back on the table for India, SpicyIP, March 27, 2015, Available at: http://spicyip.com/2015/03/data-exclusivity-back-on-the-table-for-india.html

National IPR Strategy, July 2014 , pp.11-12

Draft Policy, p.14

National IPR Strategy, September 2012, pp. 15-16

National IPR Strategy, September 2012, pp. 16

National IPR Strategy, July 2014 , pp. 12-14

Draft Policy, p. 15-16

Draft Policy,p. 16

Draft Policy, p.15

Draft Policy, p. 15-16

National IPR Strategy, September 2012, pp.16 and National IPR Strategy, July 2014 , pp.14

Draft Policy, p.16

Draft Policy, p.17

National IPR Strategy, July 2014 , pp.14-15

National IPR Strategy, July 2014 , pp.15

Draft Policy, p.24

Draft Policy, p.23

Draft Policy, p.24

National IPR Strategy, September 2012, pp.18 and National IPR Strategy, July 2014 , pp.15-16

Draft Policy, p.11

National IPR Strategy, September 2012, pp.17-18 and National IPR Strategy, July 2014 , pp.16-17

National IPR Strategy, September 2012, pp.19 and National IPR Strategy, July 2014 , pp.16

Draft Policy, p. 11

National IPR Strategy, September 2012, pp.19-20 and National IPR Strategy, July 2014 , pp. 17-18

Draft Policy, p.11

National IPR Strategy, September 2012, pp. 20 and National IPR Strategy, July 2014 , pp.18

National IPR Strategy, September 2012, pp. 18

Draft Policy, p.11

Draft Policy, p. 12

National IPR Strategy, September 2012, pp. 20-22

Draft Policy, p.12

See, CIS Comments to the First Draft of the National IP Policy, Available at: http://cis-india.org/a2k/blogs/national-ipr-policy-series-cis-comments-to-the-first-draft-of-the-national-ip-policy

National IPR Strategy, September 2012, pp. 22 and National IPR Strategy, July 2014 , pp. 18-19

National IPR Strategy, September 2012, pp.22 and National IPR Strategy, July 2014 , pp.18

National IPR Strategy, September 2012, pp.23

Draft Policy, p. 18-19

Draft Policy, p.19

Draft Policy, p.10,19

Draft Policy, p.19-20

Draft Policy, p. 12-13

National IPR Strategy, July 2014 , pp.19

Draft Policy, pp. 10, 18-19.

Draft Policy, pp. 20-22

Draft Policy, p. 22

Draft Policy, p.22-23

National IPR Strategy, July 2014 , pp.22

Draft Policy, pp. 25-26.

Draft Policy, p.26

Draft Policy, p.27-28

For more details visit https://cis-india.org/a2k/blogs/comparison-of-national-ipr-strategy-september-2012-national-ipr-strategy-july-2014-and-draft-national-ip-policy-december-2015

CCI allowed to probe Ericsson: FAQs on Ericsson’s disputes with Micromax and Intex

nehaa — 2016-05-01T13:46:52Z

The blog post is an analysis of the recent decision of the Delhi High Court, clarifying that the Competition Commission of India could investigate Ericsson for a violation of competition law. A shorter version of this blog post was published in the Quint on April 30, 2016.

Read the original article published by Quint on April 30 here.

The mobile phone is the sole access point to the internet for about half of India’s population. It has an important role to play in India’s development story, one that is amplified given the central government’s focus on leveraging the internet for better governance. The government has recognized this importance, evidenced through electronics manufacturing incentives and, a stated commitment to ensure ‘universal access to mobile connectivity’. Homegrown brands, including Micromax and Intex, with their affordable, low-cost mobile phones, play an important role in this development story.

In March, 2013, the Swedish multinational, Ericsson, sued Micromax for patent infringement, setting in motion a series of events, with the potential to disturb India’s mobile phone dream. Then, last month, the Delhi High Court (the Court) recognized the authority of the market regulator - the Competition Commission of India (CCI) - to probe Ericsson for its allegedly anticompetitive conduct.

Why did Ericsson sue Micromax?

Ericsson claims that Micromax’s mobile phones infringe its standard essential patents (SEPs) on mobile phone technologies, including 3G and EDGE.

How are some patents identified as SEPs?

International Standard Setting Organizations (SSOs) – such as ETSI or IEEE - recognize international standards. 3G and Wi-Fi are examples of such internationally recognized standards.

According to the SSOs, the determination of standards depends on consensus, driven by their members. After a standard is determined, SEP owners (including Ericsson) voluntarily disclose which of their patents are essential to the determined standard, and, undertake to license these on fair, reasonable and non-discriminatory (FRAND) terms, to any willing licensee.

Does this give rise to legal issues?

This process results in a variety of (well-documented) legal questions, many of which have been raised in India’s SEP litigation, and have been alluded to by the Court in the present judgment. The Court has recognized the potential for SEPs to create dominant positions for their owners, noting that “any technology accepted as a standard would have to be mandatorily followed [emphasis, mine] by all enterprises in the particular industry.”

Some other legal issues around SEPs include the enforceability of FRAND commitments; determining what would constitute ‘fair’, ‘reasonable’ and, ‘non-discriminatory’; the possibility of non/incomplete disclosure by patent owners; and, a refusal by licensees to negotiate FRAND terms in good faith. A related issue that has received comparatively less attention is the essentiality of peripheral or, non standard but essential patents, where there is no obligation to license on FRAND terms.

Have there been other SEP infringement suits filed in India?

Yes. Besides Micromax, Ericsson has also sued other low-cost mobile phone sellers/manufacturers, homegrown and otherwise, for patent infringement. These include Intex, Lava, Gionee, Xia and iBall. In addition, Vringo has also sued ZTE and Asus, separately. [In this article, we will limit ourselves to a discussion on Ericsson’s suits against Micromax and Intex.]

What did Micromax and Intex do after being sued by Ericsson?

Ericsson’s suits were followed by deliberations between the parties (Ericsson and Micromax, and, Ericsson and Intex, independently) and some interim orders by the Court. This litigation is ongoing, and final orders are awaited.

Meanwhile, both Micromax and Intex have pursued a series of other remedies. Intex has filed applications for the revocation of Ericsson’s patents. In addition, Micromax and Intex have each filed separate complaints under India’s Competition Act, 2002 before the CCI, alleging that Ericsson had abused its dominant position. This is a punishable offence under Indian competition law.

Micromax and Intex have both claimed that Ericsson’s royalty rates were excessive. In addition, Micromax has objected to Ericsson’s use of the threat of injunctions and custom seizures, and, has also claimed that Ericsson’s conduct results in a denial of market access for Indian handset manufacturers. Intex has alleged, inter alia, that it was forced into signing an onerous non disclosure agreement by Ericsson; and, that it was forced to negotiate licences without a complete disclosure of its patents by Ericsson.

The CCI, finding there to be a prima facie case in each of the above complaints, ordered the Director General to undertake an investigation into the allegations made by both – Micromax and Intex. These orders were challenged by Ericsson in the Court.

On what grounds did Ericsson challenge the CCI’s orders?

Briefly, Ericsson argued-

(a) that the issue was one of patent law, which barred the applicability of competition law;

(b) that it was not an ‘enterprise’ under the Competition Act, 2002, and, that the CCI was empowered to check anticompetitive conduct only of ‘enterprises’;

(d) that since the disputes between the parties were already being heard in other proceedings before the Court, the CCI could not adjudicate them; and,

(e) that Intex and Micromax were barred from making such allegations. Ericsson opined that since they had challenged its ownership of the SEPs, through revocation of petition applications (filed by Intex), and a denial of infringement claims (by Micromax), they could not now present a complaint premised on it being the owner of those same SEPs.

What did the Court hold?

Rejecting Ericsson’s arguments, the Court held that the CCI did [emphasis, mine] have the jurisdiction to examine if Ericsson’s conduct was anticompetitive, finding it to be an ‘enterprise’ under the Competition Act, 2002. However, the Court was clear that the CCI’s actions could be subject to judicial review by the High Court. It also found that the mere applicability of the Patents Act, 1970, did not bar the applicability of competition law, since the legislations covered distinct fields and served different purposes. Further, it opined that Micromax and Intex were free to explore alternative remedies; neither this pursuit, nor, the pendency of disputes on similar issues before the Court, was a bar to the CCI’s jurisdiction.

Interestingly, while not adjudicating the issue of Ericsson’s abuse of dominance in this particular case, Justice Bakhru, citing its conduct as presented by the other parties said that in some cases, “such conduct, if it is found, was directed in pressuring an implementer to accept non-FRAND terms, would amount to an abuse of dominance.”

What does the judgment mean for India’s homegrown brands?

The judgment is a boost for India’s home grown manufacturers in their battle against global patent holders. However, while it certainly validates the role and powers of India’s young market regulator, it will no doubt be appealed. One also expects multiple appeals over the CCI’s findings in the present and, future similar cases.

It is impossible to predict the outcome of legal proceedings in SEP litigation. Accordingly, Micromax, Intex (and others) would do well to augment their own patent portfolios (either by filing their own patents, or, by acquiring those of other companies). This may create a more level playing field, opening up alternate channels of negotiation, including, cross-licensing. They may also seek access to Ericsson’s SEPs under the compulsory licensing mechanism in India’s patent law.

What does the government have to say?

The Department of Industrial Policy and Promotion has recently released a discussion paper on these issues, inviting comments from stakeholders. It would be unsurprising if the government intends to regulate this space, given the strong implications for not just its flagship Make in India and Digital India programs, but also its foreign policy narrative on protecting IPRs and fostering innovation. Immediate welcome steps from the government would be a final word on the National IPR Policy, and, the adoption of the National Competition Policy, awaited since 2014 and 2011, respectively.

For more details visit https://cis-india.org/a2k/blogs/the-quint-nehaa-chaudhari-april-30-2016-cci-allowed-to-probe-ericsson

Comments on Department of Industrial Policy and Promotion Discussion Paper on Standard Essential Patents and their Availability on Frand Terms

Anubha Sinha, Nehaa Chaudhari and Rohini Lakshane — 2016-05-03T02:30:15Z

The Centre for Internet & Society gave its comments to the Department of Industrial Policy and Promotion. The comments were prepared by Anubha Sinha, Nehaa Chaudhari and Rohini Lakshané.

Download the PDF To access other submissions to the DIPP Discussion Paper on SEP and FRAND, please click here

Authors

I. PRELIMINARY

1. This submission presents comments by the Centre for Internet and Society, India ("CIS") on the Discussion Paper on Standard Essential Patents and their Availability on FRAND Terms (dated 01 March, 2016), released by the Department of Industrial Policy and Promotion ("the DIPP"), Ministry of Commerce and Industry, Government of India (" the discussion paper/ discussion paper").

2. CIS commends the DIPP for its efforts at seeking inputs from various stakeholders on this important and timely issue. CIS is thankful for the opportunity to put forth its views.

3. This submission is divided into three main parts. The first part, 'Preliminary', introduces the document; the second part, 'About CIS', is an overview of the organization; and, the third part, 'Submissions on the Issues', answers the questions raised in the discussion paper. A list of annexures and their URLs is included at the end of the document.

II. ABOUT CIS

4. CIS is a non-profit organisation that undertakes interdisciplinary research on internet and digital technologies from policy and academic perspectives. The areas of focus include digital accessibility for persons with diverse abilities, access to knowledge, intellectual property rights, openness (including open data, free and open source software, open standards, open access, open educational resources, and open video), internet governance, telecommunication reform, freedom of speech and expression, intermediary liability, digital privacy, and cyber-security.

5. CIS values the fundamental principles of justice, equality, freedom and economic development. This submission is consistent with CIS' commitment to these values, the safeguarding of general public interest and the protection of India's national interest at the international level. Accordingly, the comments in this submission aim to further these principles. In addition, the comments are in line with the aims of the Make in India and Digital India initiatives of the Government of India.

III. SUBMISSION ON THE ISSUES FOR RESOLUTION

6. The following sections provide CIS' views and recommendations on the issues enumerated in section 11 of the discussion paper:

a) Whether the existing provisions in the various IPR-related legislations, especially the Patents Act, 1970 and antitrust legislations, are adequate to address the issues related to SEPs and their availability on FRAND terms? If not, then can these issues be addressed through appropriate amendments to such IPR-related legislations? If so, what changes should be affected?

A.1. The issues related to Standard Essential Patents ("SEPs") and their licensing on a fair, reasonable and non-discriminatory ("FRAND") basis lie at the intersection of intellectual property ("IP") law and competition law . As such, in India, the Patents Act, 1970 ("the Patents Act") and, the Competition Act, 2002 ("the Competition Act") are the relevant legislations to be studied. These have been recently discussed, most recently, by Justice Bakhru in his comprehensive order inTelefonaktiebolaget LM Ericsson (Publ) v. Competition Commission of India and Another.

A.2. It is our submission that at the moment, amendments to the Patents Act and the Competition Act may not be preferred. As Justice Bakhru has noted in the aforesaid decision, there is no conflict between the remedies in the Patents Act and in the Competition Act, and, the pursuit of rights and remedies under one of these legislations does not bar a party from pursuing rights and remedies in the other. Further, under both legislations, there are scenarios for the respective authorities - the Controller General of Patents, Designs and Trademarks ("the Controller") and the Competition Commission of India (" the CCI") for the Patents Act and for the Competition Act respectively - to seek inputs from each other.

A.3. We also note that the CCI is a fairly nascent regulator; one whose jurisdiction is not yet a settled matter of law. While the judgment in the Ericsson-CCI case is indeed a good beginning, we do not believe that the matter has been conclusively decided. Accordingly, given the complex legal questions involved, over not just the interpretation of the Patents Act and the Competition Act, but also 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.

A.4. In addition, we are of the opinion that our IP law, and, our competition law, fully honor our international commitments, including the requirements under the TRIPS Agreement. As such, we would urge the Government of India to not enter into free trade agreements including, inter alia, the Regional Comprehensive Economic Partnership, that threaten our use of TRIPS flexibilities, and, impose 'TRIPS-plus' obligations.

A.5. We also urge the Government of India to adopt a balanced National IPR Policy, and, a National Competition Policy, both of which has been in abeyance for a considerable amount of time. We believe that these policies are crucial to realize the objectives of the Make in India and Digital India initiatives. At the same time, we submit that these policies be balanced, taking into account the interests of all stakeholders, developed through an extensive consultative process, and, suitably modified based on feedback.

b) What should be the IPR policy of Indian Standard Setting Organizations in developing Standards for Telecommunication sector and other sectors in India where Standard Essential Patents are used?

B.1. The discussion paper identifies four Standard Setting Organizations ("SSOs") in India, namely, the Telecom Standards Development Society of India ("TSDSI"), the Telecommunication Engineering Center ("TEC"), the Bureau of Indian Standards (" BIS"), the Global ICT Standardization Forum for India ("GISFI"), and, the Development Organization of Standards for Telecommunications in India ("DOSTI"). Comments on each of their policies have been made in the following paragraphs.

B.2. The BIS does not have an intellectual property rights ("IPR") policy of its own. The BIS Act, 2016 does not include one either. As the discussion paper notes, the BIS refers to the IPR policies of the relevant international SSO in the context of technology implemented in India, that is the same or equivalent to the ones developed or maintained by the respective SSOs.We recommend that BIS adopt an IPR policy at the earliest, factoring in India specific requirements differences: a large and exponentially growing mobile device market makes it possible for manufacturers, patent owners and implementers alike to achieve financial gains even with a low margin ("India specific requirements"). In addition, our comments on the IPR policy of the TSDSI in paragraph B.4. of this submission (below), may also be considered for the content of the BIS' future policy on IPR.

B.3 . According to the discussion paper, the TEC considers the IPR policies of the International Telecommunication Union. We recommend that like the BIS, the TEC also adopt its own IPR policy, factoring in the India specific requirements detailed above. In addition, our comments on the IPR policy of the TSDSI in paragraph B.4. of this submission (below), may also be considered for the content of the BIS' future policy on IPR.

B.4. The TSDSI, a relatively new standards body, has defined an IPR policy . In respect of this policy, the following observations are presented. First, this policy notes that IPR owners should be adequately and fairly rewarded.Second, it requires members to disclose essential IPRs in a "timely fashion." Third, as per its policy, the TSDSI can request the owner of an essential IPR to undertake, within three months, to license it irrevocably on FRAND terms. At the same time, the policy also states that the (aforesaid) ask may be subject to the condition that licensees agree to reciprocate. Should such an undertaking not be forthcoming, the TSDSI may suspend work on the standard or technical specification in question, or, adopt another course of action. Fourth, the policy identifies two scenarios for the non availability of licences prior to publication, based on the existence, or, the lack thereof, of alternative technologies. In the event of a lack of alternative technology, the policy requires a member to disclose in writing its reasons for not licensing its patents. Following this, it is submitted that there is no clarity on the concrete steps that the TSDSI would adopt in case the efforts to convince a member to license their essential IPRs, fail. The policy only states that "the TSDSI shall take further action as deemed fit." The same is also true where the IPR owner is not a member of the TSDSI. Fifth, the policy also envisages a scenario of non-availability post publication. The procedure for dealing with this is akin to the one detailed above, with the TSDSI asking for a written explanation, considering further action, including the possible withdrawal of the standard or technical specification in question. Sixth, it is observed that the policy does not require a commitment from its members to refrain from seeking injunctive relief. Seventh, it is accordingly recommended that the policy be suitably modified (a) to include India specific requirements discussed above; (b) to require a commitment from its members, that they refrain from seeking injunctive relief; (c) to delete the condition where FRAND negotiations may be subject to a condition of reciprocity; (d) to identify in detail the procedure to be followed in case of patent 'hold-ups' and patent 'hold-outs'; (e) to identify in detail the procedure to be followed in case of refusal to license by TSDSI members, and, non-members, both; and, (f) to include a detailed process on the declassification of a standard or technical specification.

B.5. The IPR policy of GISFI, is substantially similar to the IPR policy of the TSDSI, discussed in paragraph B.4. of this submission (above). Inter alia, GISFI's IPR policy also does not indicate the specific steps to be taken in case an IPR owner refuses to license essential IPRs for which no alternative technology is available. This is true in the cases both, where the refusal is by a member, and, by a non-member. Our recommendations on the IPR policy of the TSDSI in paragraph B.4. of this submission (above), may also be considered for the GISFI's IPR policy.

B.6. According to the discussion paper, the IPR policy of the DOSTI resembles that of the GIFSI. It is submitted that these policies are similar in the context of refusal to license by a member or non-member, and, like the TSDSI and the GISFI, the DOSTI also requires the patent holder to license its IPR irrevocably on FRAND terms. Accordingly, we reiterate our comments on the IPR policy of the TSDSI in paragraph B.4. of this submission (above). The aforesaid recommendations may also be considered to be relevant for the DOSTI's IPR policy.

B.7. We are also of the opinion that it would be useful for Indian SSOs to consider recommending the use of royalty-free licenses for IPRs. Illustratively, the World Wide Web Consortium ("W3C") and the Open Mobile Alliance ("OMA") encourage royalty-free licensing.

c) Whether there is a need for prescribing guidelines on working and operation of Standard Setting Organizations by Government of India? If so, what all areas of working of SSOs should they cover?

C.1. In our opinion, in a milieu where instances of SEP litigation are becoming increasingly complex, and, there is a tangible threat of the abuse of the FRAND process, it might be useful for the Government of India to make suggestions on the working of Indian SSOs.

C.2. It is suggested that the Government of India develop Model Guidelines that may be adopted by Indian SSOs, taking into account India specific requirements, including the ones detailed in paragraph B.2. of this submission (above). We believe that this measure will also enable the fulfilment of the objectives of the Make in India and Digital India initiatives.

C.3. We recommend that various stakeholders, including IP holders, potential licensees and users of IP, civil society organizations, academics, and, government bodies, including the the Indian Patent Office ("IPO"), the Department of Telecommunications, the DIPP, TRAI, and, the CCI be consulted in the creation of these Model Guidelines.

C.4. 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.

d) Whether there is a need for prescribing guidelines on setting or fixing the royalties in respect of Standard Essential Patents and defining FRAND terms by Government of India? If not, which would be appropriate authority to issue the guidelines and what could be the possible FRAND terms?

D.1. In light of the inadequacies in the IPR policies (discussed above) of various SSOs in India, as well the the spate of ongoing patent infringement lawsuits around mobile technologies, we recommend that the Government of India intervene in the setting of royalties and FRAND terms.

D.2. We propose that the Government of India initiate the formation of a patent pool of critical mobile technologies and apply a compulsory license with a five per cent royalty. Further details of this proposal have been enumerated in answer to question 'f' of the discussion paper (below).

D.3. Our motivations for this proposal are many-fold. In our opinion, it is near-impossible for potential licensees to avoid inadvertent patent infringement. As a part of our ongoing research on technical standards applicable to mobile phones sold in India, we have found nearly 300 standards so far . 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 ("NPEs") and may not be members of SSOs. The patents held by them are not likely to be disclosed. More importantly, home-grown 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.

e) On what basis should the royalty rates in SEPs be decided? Should it be based on Smallest Saleable Patent Practicing Component (SSPPC), or on the net price of the Downstream Product, or some other criterion?

E.1. It is our submission that royalty rates for SEPs should be based on the smallest saleable patent practising component ("SSPPC"). 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. 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. 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.

E.2. The net cost of the device is almost always several times that of the chipset that implements the patented technology. Armstrong et al 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 . 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 . 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.

E.3. The discussion paper notes that J. Gregory Sidak, having studied the proceedings before the Delhi High Court, approved of the manner in which the court determined royalties. In his paper, Sidak(2015) notes that in determining royalties, the court relied, inter alia, on the decision of CSIRO v.Cisco ("the CSIRO case"), a 2015 decision of the US Court of Appeals for the Federal Circuit. 2015. We humbly disagree with the opinion of the Delhi High Court on the manner of determining royalties, and, with Sidak's approval of the same.

E.4. It is our submission that the CSIRO case relied on a previous judgment, which we disagree with. The decision, a 2014 district court judgment, analogises the determination of royalties on SEPs to the determination of royalties on a copyrighted book. The court notes, "[b]asing a royalty solely on chip price is like valuing a copyrighted book based only on the costs of the binding, paper, and ink needed to actually produce the physical product. While such a calculation captures the cost of the physical product, it provides no indication of its actual value." In our opinion, this analogy is flawed. While a book is a distinct product as a whole, a mobile phone is a sum-total of its parts. If at all, a mobile phone could be compared with a book with several authors, as multiple technologies belonging to several patent holders are implemented in it. This judgement bases valuation for one set of technologies on the whole device, thus awarding compensation to the licensor even for those technologies implemented in the device that are not related to the licensed technologies. In our opinion, charging royalty on the net selling price of a device for one technology or one set of technologies is thus more like a referral scheme and less like actual compensation for the value added. Accordingly, royalties must be charged on the SSPPC principle.

f) Whether total payment of royalty in case of various SEPs used in one product should be capped? If so, then should this limit be fixed by Government of India or some other statutory body or left to be decided among the parties?

F.1. CIS has proposed a compulsory licensing fee of five per cent on a patent pool of critical mobile technologies. The rationale for this figure is the royalty cap imposed by India in the early 1990s.

F.2. As part of regulating foreign technology agreements, the (former) Department of Industrial Development (later merged with the 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". Royalties higher than 5 percent or 8 percent, as the case may be, required securing approval from the government.

F.3. 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.

F.4. 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, in our opinion, litigation over patent infringement in India has limited the manufacture and sale of mobile devices of homegrown brands.

F.5. We believe that the aforementioned developments are detrimental to the Make in India and Digital India initiatives of the Government of India, and, the government's aim of encouraging local manufacturing, facilitating indigenous innovation, as well as strengthening India's intellectual property regime. It is our submission, therefore, that the payment of royalties on SEPs be capped.

F.6. We submit that such a measure is particularly important, given the nature of SEP litigation in India. 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, home-grown.

F.7. In June, 2013, we had recommended to the erstwhile Hon'ble Minister for Human Resource Development 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. 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. 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 anti-competitive practices."

F.8. We believe that such a measure is not in breach of our international obligations under the TRIPS Agreement.

g) Whether the practice of Non-Disclosure Agreements (NDA) leads to misuse of dominant position and is against the FRAND terms?

G.1. The issue of Non Disclosure Agreements ("NDAs") in SEP/FRAND litigation is a contentious one. Patent holders argue that they are essential to the license negotiation process to protect confidential information, whereas potential licensees submit that NDAs result in the imposition of onerous conditions.

G.2. In India's SEP litigation, the use of NDAs has been raised as an issue in at least two cases - separately by Intex and by iBall , in their cases against Ericsson. Intex and iBall have both claimed that the NDAs that Ericsson asked them to sign were onerous, and favoured Ericsson.

G.3. According to Intex, the NDA in question would result in high legal costs for Intex, and, would render it unable to disclose crucial information to its vendors (who had agreed to supply to Intex on the condition that Intex was not infringing on any patents).

G.4. According to iBall, the parties had agreed to enter a global patent license agreement ("GPLA") but Ericsson insisted on an NDA. Upon receiving the terms of the NDA, iBall claimed before the CCI that Ericsson's refusal to identify the allegedly infringed SEPs; the threat of patent infringement proceedings; the attempt to coax iBall to enter into a "one-sided and onerous NDA"; the tying and bundling patents irrelevant to iBall's products by way of a GPLA; demanding unreasonably high royalties by way of a certain percentage value of handset as opposed to the cost of actual patented technology used all constituted abuse of Ericsson's dominant position under Section 4 of the Competition Act.

G.5. In India, the law on misuse (abuse) of dominant position by an 'enterprise' is found primarily in Section 4 of the Competition Act (read with Section 2(h) of the Competition Act, which defines 'enterprise'). In its recent decision in the Ericsson-CCI case , the Delhi High Court has found Ericsson to be an 'enterprise' for the purposes of the Competition Act, and hence subject to an inquiry under Section 4 of the same legislation. In the same decision, the court has also recognised the jurisdiction of the CCI to examine Ericsson's conduct for abuse of behaviour, based on complaints by Micromax and Intex. The use of NDAs is one of the grounds on which the parties have complained to the CCI.

G.6. Pending a final determination by the CCI (and subsequent appeals), it would be premature to make an absolute claim on whether the use of NDAs results in an abuse of dominant position in all instances. However, the following submissions are made: First, the determination of misuse/abuse of dominant position is influenced by a number of factors , i.e., such a determination should be made on a case to case basis. Second, the market regulator, the CCI, is best situated to determine (a) abuse of dominance, and (b) whether the use of NDAs by an enterprise constitutes an abuse of its dominance. Third, the question of whether the use of NDAs constitutes misuse of dominance needs to be addressed in two parts - (a) whether the use of the NDA itself is abusive, irrespective of its terms and, (b) whether the use of certain specific terms renders the NDA abusive. Fourth, NDAs could potentially lead to the patent owner abusing its dominant position in the market, as well as result in an invalidation of FRAND commitments and terms. NDAs make it impossible to determine if a patent holder is engaging in discriminatory licensing practices. Fifth, NDAs are especially harmful in the case of NPEs-- companies that hold patents and monetise them but don't build or manufacture the components or devices that implement the technology associated with the patents.

h) What should be the appropriate mode and remedy for settlement of disputes in matters related to SEPs, especially while deciding FRAND terms? Whether Injunctions are a suitable remedy in cases pertaining to SEPs and their availability on FRAND terms?

H.1. 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.

H.2. 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. " Such an independent adviser may inform the court on the technical nuances of the matter.

H.3. 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. H.4. 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. 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. Further, as Contreras (2015) 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.

i) What steps can be taken to make the practice of Cross-Licensing transparent so that royalty rates are fair & reasonable?

I.1. The Patents Act requires patentees and licensees to submit a statement on commercial working of the invention to the Controller every year. 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 in Natco Pharma v. Bayer Corporation 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.

I.2. However, there has been little compliance of this requirement by the patentees, despite the IPO reiterating the importance of compliance through the issuance of multiple public notices (suo motu and in response to a public interest litigation filed in 2011 ), and, reminding the patentees that non-compliance is punishable with a heavy fine. Findings of research submitted by one of the parties in the writ of the 2011 public interest litigationShamnad Basheer v. Union of India and others 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.

I.3. In 2015, CIS queried the IPO website for Form 27s of nearly 4,400 patents. CIS' preliminary research (ongoing and unpublished) echoes findings similar to the ones disclosed in the case discussed in paragraph I.2. of this submission (above).

I.4. In view of the submissions above, CIS makes the following recommendations to make the practice of cross-licensing transparent so that royalty rates are fair & reasonable: first, that there be a strict enforcement of the submission of Form 27s on a regular and timely basis by the patentees; and, second, that guidelines may be drawn up on whether it was discriminatory to charge no royalties (whether on the SSPPU or on the whole device) for a patent holder in a cross-licensing arrangement with another, when it charges royalty on the selling price of the device from a non-cross-licensor.

j) What steps can be taken to make the practice of Patent Pooling transparent so that royalty rates are fair & reasonable?

J.1. Patent pools can be understood as an agreement between two or more patent owners to license one or more of their patents to one another or to third parties. Thus, the creation of a patent pool makes use of the legal instrument of licensing, similar to the practice of cross-licensing. Insofar, we reiterate our recommendations made in paragraph I.3. of this submission (above), which apply to the answer to the instant question.

J.2. In furtherance of the recommendation above, we also propose the alteration of the Form 27 template to include more disclosures. Presently, patentees are required to 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.

J.3. It is also our submission that patent pools be required to offer FRAND licenses on the same terms to both members and non-members of the pool.

k) How should it be determined whether a patent declared as SEP is actually an Essential Patent, particularly when bouquets of patents are used in one device?

K.1. We submit that several studies on the essentiality of SEPs indicate that only a small percentage of SEPs are actually essential. A study conducted byGoodman and Myers (2004) showed that only 21% of SEPs pertaining to the 3G standard in the US were deemed to be actually essential. Another study conducted by the same authors in 2009 for WCDMA patents showed that 28% SEPs were essential.

K.2. In our opinion, first, the methodology adopted by Goodman and Myers could be replicated to determine the "essential" nature of an SEP. Second, while adopting their methodology, it would be useful to address some of the issues over which these studies were critiqued. Accordingly, we suggest that (a) laboratory tests may be conducted by an outside expert or by a commercial testing laboratory, and not at an in-house facility owned by either parties, so as to eliminate in the lab results; and, (b) expert opinions may be considered in order to determine essentiality.

l) Whether there is a need of setting up of an independent expert body to determine FRAND terms for SEPs and devising methodology for such purpose?

L.1. In our opinion, there is no need for an independent expert body to determine FRAND terms for SEPs and devising the methodology for such a purpose. The existing legal and regulatory framework is reasonably equipped to determine FRAND terms. A more detailed submission on the existing framework and suggested changes has been made in our answer to question 'a' of the discussion paper (above).

L.2. However, we observe that Indian courts, tribunals and the CCI are yet to endorse a methodology for making FRAND determinations. The judgments of the Delhi High Court do not provide a conclusive rationale or methodology for the imposition of royalty rates in the respective matters.

L.3. We submit that in the absence of definitive Indian jurisprudence for determination of FRAND terms, American jurisprudence provides certain guidance. Contreras (2015) informs us about the various case law American courts and regulators have developed and adhered to whilst making such determinations.The dominant analytical framework for determining "reasonable royalty" patent damages in the United States today was set out in 1970 by the District Court for the Southern District of New York in Georgia-Pacific Corp. v. U.S. Plywood Corp . While this may be used as a guiding framework, the question of methodology remains far from settled.

m) If certain Standards can be met without infringing any particular SEP, for instance by use of some alternative technology or because the patent is no longer in force, what should be the process to declassify such a SEP?

M.1. In our opinion, if a standard can be met without infringing a patent declared to be "essential" to it, then the patent is not actually "essential". In this instance, the methods suggested in response to question 'k' of the discussion paper (above) could be used to declassify the SEP.

M.2. We further submit that if a patent is no longer in force, that is, if it has expired, then it ceases to be patent, and therefore an SEP. The process to declassify such an SEP could be simply to declare it an expired patent.

M.3. In addition, if it is possible to implement a certain standard by using an alternative technology, then the SEP for such a standard is not actually an SEP. However, the scale of operations and that of mass manufacturing and compatibility requirements in devices and infrastructure mean that it is unlikely to have different methods of implementing the same standard.

M.4. In general, it is our submission that an Indian SSO could maintain a publicly accessible database of SEPs found to be invalid or non-essential in India.

7. We reiterate our gratitude to the DIPP for the opportunity to make these submissions. In addition to our comments above, we have shared some of our research on this issue, in the 'Annexures', below.

8. It would be our pleasure and privilege to discuss these comments with the DIPP; 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.

On behalf of the Centre for Internet and Society, 22 April, 2016

Anubha Sinha - anubha@cis-india.org | Nehaa Chaudhari - nehaa@cis-india.org

Rohini Lakshané - rohini@cis-india.org

___________________________________________________________________________

___________________________________________________________________________

ANNEXURES

___________________________________________________________________________

● Anubha Sinha, Fuelling the Affordable Smartphone Revolution in India, available at http://cis-india.org/a2k/blogs/digital-asia-hub-the-good-life-in-asias-21-st-century-anubha-sinha-fueling-the-affordable-smartphone-revolution-in-india (last accessed 22 April, 2016).

● 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/08483340-C1B9-4BA4-B6A9-D6B6494391B8.pdf (last accessed 22 April, 2016).

● Nehaa Chaudhari, Pervasive Technologies:Patent Pools, available at http://cis-india.org/a2k/blogs/patent-pools (last accessed 22 April, 2016).

● Nehaa Chaudhari, The Curious Case of the CCI:Competition Law and SEP Regulation in India, presented at the 4th Global Congress on Intellectual Property and the Public Interest, available at http://cis-india.org/a2k/blogs/the-curious-case-of-the-cci-competition-law-and-sep-regulation-in-indi a (last accessed 22 April, 2016).

● Nehaa Chaudhari, Letter for Establishment of Patent Pool for Low Cost Access Devices through Compulsory Licences, available at http://cis-india.org/a2k/blogs/letter-for-establishment-of-patent-pool-for-low-cost-access-devices (last accessed 22 April, 2016).

● Prof 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 22 April, 2016).

● 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 22 April, 2016).

● Rohini Lakshané, Open Letter to Prime Minister Modi, February 2015, available at http://cis-india.org/a2k/blogs/open-letter-to-prime-minister-modi (last accessed 22 April, 2016).

● Rohini Lakshané, FAQ: CIS' proposal to form a patent pool of critical mobile technology, September 2015, available at http://cis-india.org/a2k/blogs/faq-cis-proposal-for-compulsory-licensing-of-critical-mobile-technologies (last accessed 22 April, 2016).

● Rohini Lakshané, Joining the dots in India's big-ticket mobile phone patent litigation, May 2015, last updated October 2015, available at http://cis-india.org/a2k/blogs/joining-the-dots-in-indias-big-ticket-mobile-phone-patent-litigation (last accessed 22 April, 2016).

● Rohini Lakshané, Compilation of Mobile Phone Patent Litigation Cases in India, March 2015, last updated April 2016, available at http://cis-india.org/a2k/blogs/compilation-of-mobile-phone-patent-litigation-cases-in-india , (last accessed April 22, 2016).

● Rohini Lakshané, Patent landscaping in the Indian Mobile Device Marketplace, presented at the 4th Global Congress on Intellectual Property and Public Interest, December 2015, available at https://drive.google.com/open?id=0B8SgjShAjhbtME45N245SmowOGs (last accessed 22 April, 2016).

● Vikrant Narayan Vasudeva, Patent Valuation and Licence Fee Determination in the Context of Patent Pools, available at http://cis-india.org/a2k/blogs/patent-valuation-and-license-fee-determination-in-context-of-patent-pools (last accessed 22 April, 2016).

************

This submission has been authored by (alphabetically) Anubha Sinha, Nehaa Chaudhari and Rohini Lakshané, on behalf of the Centre for Internet and Society, India.

See The Centre for Internet and Society, available at http://cis-india.org (last accessed 22 April, 2016) for details of the organization, and, our work.

Make in India, available at http://www.makeinindia.com/home (last accessed 22 April, 2016).

Digital India, available at http://www.digitalindia.gov.in/ (last accessed 22 April, 2016).

See Nehaa Chaudhari, The Curious Case of the CCI:Competition Law and SEP Regulation in India, presented at the 4th Global Congress on Intellectual Property and the Public Interest, available at http://cis-india.org/a2k/blogs/the-curious-case-of-the-cci-competition-law-and-sep-regulation-in-india (last accessed 21 April, 2016) for further details on relevant provisions.

In the High Court of Delhi, W.P.(C) 464/2014 & CM Nos. 911/2014 & 915/2014, judgment delivered on 30 March, 2016. Hereafter referred to as the Ericsson-CCI judgment.

Id.

Under Articles 226 and 227 of the Constitution of India, and, under Article 32 of the Constitution of India, for the High Courts and the Supreme Court, respectively.

Agreement on Trade-Related Aspects of Intellectual Property Rights, available at https://www.wto.org/english/tratop_e/trips_e/t_agm0_e.htm (last accessed 22 April, 2016).

KEI Staff, 2015 October 15 version: RCEP IP Chapter, available at http://keionline.org/node/2472 (last accessed 22 April, 2016).

BIS Act, 2016, available at http://www.bis.org.in/bs/bsindex.asp (last accessed 21 April, 2016).

TSDSI, Intellectual Property Rights Policy, available at http://www.tsdsi.org/media/Help/2014-12-17/TSDSI-PLD-40-V1.0.0-20141217.pdf (last accessed 22 April, 2016).

Id at Clause 3.1.

Id at Clause 5.1.

Id at Clause 5.2.

Id at Clause 5.5.

Id at Clauses 7.1. and 7.2.

Id at Clause 7.2.1.a (iii).

Id at Clause 7.2.1.b(iii).

Id at Clause 7.3.

GISFI, Intellectual Property Rights Policy, available at http://www.gisfi.org/ipr_policy/gisfi_intellectual_property_righ.htm (last accessed 22 April, 2016).

Id at Clauses 6.2.1.a(iii) and 6.2.1.b(iii).

See W3C, Patent Policy, available at https://www.w3.org/Consortium/Patent-Policy-20040205/ (last accessed 22 April, 2016) for more details on their royalty-free licences.

See OMA, Use Agreement, available at http://openmobilealliance.org/about-oma/policies-and-terms-of-use/use-agreement/ (last accessed 22 April, 2016) for more details on their royalty-free licences.

See Rohini Lakshané, Open Letter to PM Modi, available at http://cis-india.org/a2k/blogs/open-letter-to-prime-minister-modi (last accessed 22 April, 2016) for further details of CIS' proposal.

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 22 April, 2016).

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 S-l, 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/apple-samsung-case-shows-smartphone-as-lawsuit-magnet.html (last accessed 22 April, 2016).

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 22 April, 2016).

Ann Armstrong, Joseph J. Mueller and Timothy D. Syrett, The Smartphone- Royalty Stack:Surveying Royalty Demands for the Components Within Modern Smartphones, available at https://www.wilmerhale.com/uploadedFiles/Shared_Content/Editorial/Publications/Documents/The-Smartphone-Royalty-Stack-Armstrong-Mueller-Syrett.pdf (last accessed 22 April, 2016).

Florian Mueller, Ericsson Explained Publicly why it Collects Patent Royalties from Device (Not Chipset) Makers, available at http://www.fosspatents.com/2014/01/ericsson-explained-publicly-why-its.html (last accessed 22 April, 2016).

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/2014-08-25/news/53205445_1_digital-india-india-today-financial-services (last accessed 22 April, 2016).

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/08483340-C1B9-4BA4-B6A9-D6B6494391B8.pdf (last accessed 22 April, 2016).

See part 10.2.2. of the Discussion Paper, at page 25.

J.Gregory Sidak, FRAND in India:The Delhi High Court's Emerging Jurisprudence on Royalties for Standard-Essential Patents, available at http://jiplp.oxfordjournals.org/content/early/2015/06/11/jiplp.jpv096.full (last accessed 22 April, 2016).

Appeal from the United States District Court for the Eastern District of Texas in No. 6:11-cv-00343-LED, decided on 03 December, 2015, available at. http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1066.Opinion.12-1-2015.1.PDF (last accessed 22 April, 2016).

Id.

Kumkum Sen, News on Royalty Payments Brings Cheer in New Year, available at http://www.business-standard.com/article/economy-policy/news-on-royalty-payment-brings-cheer-in-new-year-110010400044_1.html (last accessed 21 April, 2016).

See Sanjana Govil, Putting a Lid on Royalty Outflows- How the RBI Can Help Reduce India's IP Costs, available at http://cis-india.org/a2k/blogs/lid-on-royalty-outflows (last accessed 21 April, 2016), 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.

Supra note 33.

Nehaa Chaudhari, Letter for Establishment of Patent Pool for Low-cost Access Devices through Compulsory Licenses, available at http://cis-india.org/a2k/blogs/letter-for-establishment-of-patent-pool-for-low-cost-access-devices (last accessed 21 April, 2016).

Supra note 26.

Rohini Lakshané, FAQ: CIS' proposal to form a patent pool of critical mobile technology, September 2015, available at http://cis-india.org/a2k/blogs/faq-cis-proposal-for-compulsory-licensing-of-critical-mobile-technologies (last accessed 22 April, 2016).

Id.

See the Ericsson-CCI case, supra note 6, for Intex's submissions as discussed by Justice Bakhru.

Id.

Rohini Lakshané, Compilation of Mobile Phone Patent Litigation Cases in India, available at http://cis-india.org/a2k/blogs/compilation-of-mobile-phone-patent-litigation-cases-in-india (last accessed 21 April, 2016).

See the Ericsson-CCI case, supra note 6, at paragraph 19.2.

Supra note 47.

See the Ericsson-CCI judgment, supra note 6, at paragraphs 88-105.

Section 19(4) of the Competition Act. See also Competition Commission of India v. Steel Authority of India and Another, (2010) 10 SCC 744.

Section 115 of the Patents Act, 1970.

Huawei Technologies Co. Ltd v. ZTE Corp. and ZTE Deutschland, Judgment of the Court (Fifth Chamber) of 16 July 2015 in GmbH C-170/13.

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. 337-TA-745 (Jun. 6, 2012).

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 http://ssrn.com/abstract=2374983 or http://dx.doi.org/10.2139/ssrn.2374983 (last accessed 22 April, 2016).

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

Sai Vinod, Patent Office Finally Takes Form 27s Seriously, available at http://spicyip.com/2013/02/patent-office-finally-takes-form-27s.html (last accessed 22 April, 2016).

Order No. 45/2013 (Intellectual Property Appellate Board, Chennai), available at http://www.ipab.tn.nic.in/045-2013.htm (last accessed 22 April, 2016).

Intellectual Property India, Public Notice, available at http://www.ipindia.nic.in/iponew/publicNotice_Form27_12Feb2013.pdf (last accessed 22 April, 2016) and Intellectual Property India, Public Notice, available at http://ipindia.nic.in/iponew/publicNotice_24December2009.pdf (last accessed 22 April, 2016).

Supra note 57.

Id.

See research findings available at http://spicyip.com/wp-content/uploads/2015/05/FORM-27-WP-1R-copy.pdf (last accessed 22 April, 2016).

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/patent-working-in-india-delhi-hc-issues-notice-in-shamnad-basheer-v-union-of-india-ors-i.html (last accessed 22 April, 2016).

In response to an RTI request made to the IPO in Mumbai for forms unavailable on the website, CIS received a reply stating, "As thousand [sic] of Form -27 are filed in this office, it is very difficult to segregate Form-27 for the patent numbers enlisted in your RTI application as it needs diversion of huge official staff/ manpower and it will affect day to day [sic] work of this office." This research is ongoing and unpublished. Please contact us for a copy of the RTI application and the response received.

WIPO Secretariat, Patent Pools and Antitrust - A Comparative Analysis, available at https://docs.google.com/viewer?url=http%3A%2F%2Fwww.wipo.int%2Fexport%2Fsites%2Fwww%2Fip-competition%2Fen%2Fstudies%2Fpatent_pools_report.pdf (last accessed 22 April, 2016).

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/Form-27.pdf (last accessed 22 April, 2016).

David J. Goodman and Robert A. Myers, 3G Cellular Standards and Patents, available at http://patentlyo.com/media/docs/2009/03/wirelesscom2005.pdf (last accessed 22 April, 2016).

Darien CT, Review of Patents Declared as Essential to WCDMA through December, 2008, available at http://www.frlicense.com/wcdma1.pdf (last accessed 22 April, 2016).

Supra note 67.

Donald L. Martin and Carl De Meyer, Patent Counting, a Misleading Index of Patent Value: A Critique of Goodman & Myers and its Uses, available at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=949439 (last accessed 22 April, 2016).

Rohini Lakshané, Joining the Dots in India's Big-Ticket Mobile Phone Patent Litigation, available at http://cis-india.org/a2k/blogs/joining-the-dots-in-indias-big-ticket-mobile-phone-patent-litigation (last accessed 22 April, 2016). See also supra note 47 for more details.

Supra note 55.

318 F. Supp. 1116, 1120 (S.D.N.Y. 1970), modified and aff'd, 446 F. 2d 295 (2d Cir. 1971), cert. denied, 404 U.S. 870 (1971).

2015

They filed it in 2011

The 2011 filing only includes pharma, BTW: http://spicyip.com/docs/Form%2027s.pdf. Also, this writ is from May 2015: http://spicyip.com/wp-content/uploads/2015/05/FORM-27-WP-1R-copy.pdf Anyway, I'll leave it as it is.

For more details visit 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

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

Joining the Dots in India's Big-Ticket Mobile Phone SEP Litigation

Rohini Lakshané and Shweta Mohandas — 2019-07-06T01:42:35Z

Rohini Lakshané and Shweta Mohandas have published their last update to this paper that chronicles mobile device SEP litigation in India. All developments in the lawsuits filed in the Delhi High Court and complaints made to the CCI that were published in reliable sources till 20 September 2018 are mentioned in this paper. The paper was an output under the Pervasive Technologies project.

Abstract

Nearly three years after litigation over patents and designs associated with big-ticket mobile technology started in the US, the first salvo in the patent wars was fired in India. Sweden-based Ericsson, a provider of communications infrastructure and services, sued home-grown budget smartphone manufacturer Micromax in early 2013. Patent litigation in the arena of mobile phone technology has steadily risen since. Lei Jun, the chairman of China's largest smartphone manufacturer Xiaomi once said that facing a patent lawsuit "can be considered a rite of passage for a company that is coming of age". The first part of this paper, "Compilation of lawsuits" is an attempt to chronicle the significant developments in big-ticket lawsuits pertaining to mobile technology patents filed in India. The second part, "Commonalities and differences in the lawsuits" is an attempt to join the dots between the developments that were either remarkably common or notably different. All information presented in this paper has been gathered from publicly available sources and is up-to-date till the time of writing (October 31, 2017). This paper has been published as a part of the Pervasive Technologies project at the Centre for Internet and Society (CIS). Invaluable research assistance was provided by Nayana Dasgupta, Sampada Nayak and Suchisubhra Sarkar (in alphabetical order).

Click to download the paper

For more details visit https://cis-india.org/a2k/blogs/rohini-lakshane-and-shweta-mohandas-june-30-2019-joining-the-dots-in-india-s-big-ticket-mobile-phone-sep-litigation

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

Comments on the Draft Guidelines for Computer Related Inventions

puneeth — 2013-08-02T08:27:03Z

The Centre for Internet and Society (CIS) submitted the below comments to the office of the Controller General of Patents Designs & Trademarks, Mumbai on July 26, 2013.

July 26, 2013

To,
The Office of the Controller General of Patents, Designs & Trade Marks
Bhoudhik Sampada Bhavan,
Antop Hill, S. M. Road,
Mumbai - 400 037

Subject: Comments on the Draft Guidelines for Computer Related Inventions
The Centre for Internet and Society (“CIS”) would like to commend the Office of Controller General of Patents, Designs and Trade Marks (“Controller General”) for preparing and inviting comments on the Draft Guidelines on Computer Related Inventions (“Guidelines”). With respect to the Guidelines, CIS would like to submit the following comments:

Background

The patent examiner is the most important link in the chain of patent law as he/she acts as the gatekeeper to defend the boundaries of patent law. This is especially so in the case of CRIs as the debate is centered on the question of the subject matter of patents. We are in full agreement with the position of excluding computer programs per se from patent protection. Especially given that they already qualify for protection under both copyright and trademark law. The question of patenting CRIs is problematic as such inventions have a high rate of obsolence. To avoid this, CRIs need to meet a higher standard during patent examination. It is in this interest that CIS presents the following comments on the Guidelines.

Scope of Section 3(k) , paragraph 2.4:
"Therefore, the re-instatement of the original phraseology of section 3 (k) clearly indicates that the legislature intended to retain the original scope of exclusion and did not approve its widening under this sub-section as attempted through the ordinance."

The Guidelines correctly identify the position of law as regards Section 3(k) and the evolution of the provision through the 2002 and 2004 amendments. However, it does not explain the meaning of the provision with regard to the way it applies to patent examination. The meaning of Section 3(k) is to exclude the grant of patents for computer programs per se based on the subject matter test.

So, the proposition here is that if a patent application were to fall in the category of nonpatentable subject matter, the patent should not be awarded. This should be made clearer for the benefit of prospective patent applicants and examiners. Our submission is that the explanation to Section 3(k) should include the subject matter test.
Definition of “per se”, paragraph 3.11:
The term “per se” is not defined in Indian statutes and hence, for interpretation of this term, the general dictionary meaning may be used.

In our comment on the 2010 Patent Manual, we had asked for clarification on the meaning of the phrase “per se” in Section 3(k).[1] While the Guidelines attempt to clarify the meaning, referring to the dictionary meaning of the phrase creates numerous issues. The phrase per se was first used in the European Patent Convention and the Proposed EU Directive on CRIs where per se was taken to mean on the face of it.

When similar phraseology was used in the Indian Act, some groups felt that this should be interpreted similarly rather than to mean by itself. The Guidelines do refer to the latter meaning. But the issue is with the use of the phrase in the provision and its cumulative meaning. So, it would help if the Guidelines, while explaining the meaning of the phrase also clarify that 3(k) means computer programs by themselves.
Definitions of “algorithm”, “software”, “hardware” and “firmware”, paragraph 3
Once again the Guidelines make reference to the Oxford Dictionary while defining these words. It is understandable that there is some difficulty in defining them as there are no statutes that explicitly define these words. However, the definitions in the Dictionary pertain to general usage and the implications of these words can change based on context. In this regard, it would be useful for the patent examiner to consult an expert while dealing with the usage of these terms or at least use a technical dictionary that defines these words as per their usages in that particular field.
Claims concerning CRIs- subject matter, paragraph 4
This Section correctly identifies the categories under which claims are made in patent applications for CRIs. However, even before making such categories, the applications must be tested on the question of subject matter. As pointed out earlier, if an invention falls outside defined subject matter, it should not be granted a patent.

The number of patents filed has gone up by almost 50% this year[2] and there is a need to dispose off, applications in a speedy but efficient manner. It must also be noted that there have been many cases where business methods and algorithms have been passed off as inventions and granted patents. [3] In order to avoid such errors and reduce transaction costs, it would help to carry out a preliminary subject matter evaluation at the outset.
Examination Procedure, paragraph 5
The examination procedure of patent applications relating to CRIs is common with other inventions to the extent of considering novelty, inventive step and industrial applicability.

The Guidelines suggest that CRIs can be tested on the same standards as other inventions on the above three questions. However, CRIs differ from other inventions. Most CRIs are an incremental innovation on existing CRIs. Many CRIs also become obsolete in a very short time. In the field of data storage for instance, the first CD was invented in 1982, 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.

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 obsolence. 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.

Inventive Step, paragraph 5.3
(ja) "inventive step" means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art;

The Guidelines quote Section 2(ja) of the Patents Act and refer to the IPAB decision in the Enercon case to explain the meaning of inventive step. But, the meaning of certain terms, like “technical advance” and “person skilled in the art” is unclear.

With respect to “technical advance”, one could infer the meaning from (4) of the quote from the Enercon case (citing Windsurfing and Pozzoli) which reads:
Imputing to a normally skilled but unimaginative addressee what was common general knowledge in the art at the priority date

However, as Prof. NS Gopalakrishnan notes, the standards for what is an inventive step differs based on the industry.[4] For instance, the pharmaceutical industry has a relatively lower standard for inventiveness when compared to other industries.[5] Given the unique nature of CRIs, it is important to clarify to what the standard for inventiveness or the “technical advance” is in this case.

In the same respect, the meaning of “person skilled in the arts” also needs explanation in relation to CRIs. This is especially so since the patentable subject matter as per the Guidelines are software attached to a hardware device. As per the case of Schlumberger v. EMGS[6] before the English Court of Appeals, in case of inventions which involve the “marriage of skills”, a person skilled of arts can be a team of persons. The case also held that the person who judges sufficiency and the person from whose standpoint nonobviousness is judged are different. Given the range of areas that are involved in CRIs, a person skilled of art would have no set description and would more often than not be a team of people.
Ordering of paragraphs 5.4.5 to 5.4.7
These paragraphs deal with the subject matter test. Paragraphs 5.4.5 and 5.4.6 deal with computer programs and the implications of the use of the phrase “per se”. Paragraph 5.4.7 deals with business method, mathematical method and other excluded patents as per law. As argued earlier, the subject matter evaluation needs to be made in the first instance. So a patent examiner must be made aware of the exclusions at first and then the exception or the dilution of such exclusion. These paragraphs seem to accomplish this in the reverse order. For greater clarity we propose that the paragraphs be ordered as: 5.4.7, 5.4.5 followed by 5.4.6.
Flow Chart Showing Procedure of Examination, paragraph 9
The flow chart shows a step by step process of examining CRIs. However, the subject matter determination is done towards the end. There is debate on whether there should be a set order for examining patents. However, in the case of CRIs there must be an exception as the statute explicitly prohibits certain types of patents (business method, algorithm etc). As argued earlier, in order to reduce transaction costs, the subject matter test must be made at the very beginning. There should at least be a preliminary determination as to Section 3(k) to reject patent applications for those inventions that can easily be classified under this provision.

[1]. See http://cis-india.org/a2k/blog/cis-submission-draft-patent-manual-2010 (Accessed on 23rd July, 2013).

[2]. See http://www.thehindubusinessline.com/news/science/number-of-patent-applications-up-nearly-50-thisyear/
article4508058.ece (Accessed on 23rd July, 2013).

[3]. See for business method patents granted in India: http://spicyipindia.blogspot.in/2013/01/guest-post-whyare-
business-method.html (Accessed on 19th July, 2013).

[4]. NS Gopalakrishnan and TG Agitha, “Principles of Intellectual Property” (1st ed. 2009), at 91.

[5]. Ibid.

[6]. [2010] EWCA Civ 819.

For more details visit https://cis-india.org/a2k/blogs/comments-on-draft-guidelines-for-computer-related-inventions

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

Cultural Interests vs. Modernization: Robert Shapiro on IPR & Innovation in India

samantha — 2014-04-03T10:54:08Z

Last Friday March 28, 2014, prominent economist and chairman of Sonecon, llc, Dr. Robert Shapiro, lead a discussion on the roles of IPR and FDI in innovation. Within his research findings, Shapiro argues for India to adopt a stricter IP regime in order to attract higher rates of FDI in pharmaceuticals and other industries, and in turn, to spur a more successful economy.

The closed door round-table discussion had been organized by policy research and advocacy organization, T he Takshashila Institute, and hosted by Cobalt, a recently opened co-working space in Bangalore. The event's speaker, Robert Shapiro, has advised U.S. President Bill Clinton, British Prime Ministers Tony Blair and Gordon Brown, and U.S. Vice President Albert Gore, as well as AT&T, Exxon-Mobil and Google, on economic policy and security matters. Recently he co-authored an economic research paper, titled, How India Can Attract More Foreign Direct Investment, Create Jobs and Increase GDP, which can be accessed here.

Within this paper, Shapiro and Dr. Aparna Mathur of the American Enterprise Institute argue that the most effective way for India to attract “further investment and job creation for improving the innovation environment in India” is by respecting the intellectual property rights of foreign investors—specifically within the pharmaceutical sector. The main points made by Shapiro within his session and research paper will be looked at closer to follow.

FDI to spur innovation

Shapiro started the session by introducing the controversy over the role of innovation in economic processes. Contrary to the belief that the majority of economists share—that innovation happens outside the economy incidentally “because someone happens to have a bright idea”—Shapiro suggests that innovation plays a much more integral role within an economy, and even goes as far as considering innovation the most powerful underlying factor (possibly more so than education). Shapiro asserts that without innovation, “every economy has to stall out,” and what prevents this is new capital changing productivity and growth rates; and in India's case: through foreign direct investment (FDI).

With reference to China's manufacturing sectors, Shapiro depicts the immense benefits stemming from FDI. As a direct effect, he states that not only do new technologies come in but new ways of financing and management are brought in as well. The bulk of the impact of FDI, however, is an indirect function, resulting from a “spillover effect” at a regional level as more and more companies begin to adopt the ways of the new enterprises. The impact of innovation, however, is an exclusive function of how effectively it is applied. In order to maximize foreign investment, Shapiro stresses the need to eradicate any barriers to new businesses so that they may adopt and adapt to the new incoming technologies.

On several occasions within his address and the accompanying discussion, Shapiro had asserted India as being an outlier in terms of FDI, with emphasis on India's FDI rates being half of those of Malaysia and Thailand (countries implied to be incomparable to India in an economic sense). He admits that he does not understand the reasons for this discrepancy, as standard economic factors alone cannot explain this; such as a country's market size, availability of labour, and quality of infrastructure (despite India's room for improvement here).

In order to understand India's FDI rates then, Shapiro offers the importance of considering the political factors at play to the same extent as the economic ones (if not, more) with some of such factors being: the state's attitudes towards property rights, bankruptcy regime, levels of corruption, and the enforcement of contracts and intellectual property rights.

And it is supposedly here, at this last factor, where the central issue lies for India.

IP as a product of cultural decisions

As new ideas continue to dwarf the value of physical capital, economies are increasingly composite of these intangible assets (intellectual property)—such as patents, copyright, software and name brands—or at least within the US economy anyway. These intellectual asset-intensive economies are not limited to industries such as pharmaceuticals, software, and IT hardware (as one might initially suspect); rather, those of media, automobiles, beverages and tobacco and other consumer goods. In 2011, Shapiro states, half of US industries equalled or exceeded the three former industries in intellectual assets. These industries, which had formerly been sectors based on production, have now outsourced their production schemes to India and China.

Shapiro explains these economic trends as a function of a repeated set of choices in support of American values of growth, prosperity, and individualism. He continues in saying that cultural values are also important to consider when trying to undergo modernization. A country with more traditional values would be wrong to strive to modernize at the same rate as that of the US, for example. In such a case, modernizing at a much slower rate is advisable, and if this is unfavourable, Shapiro alternatively suggests that “you can sometimes change culture by changing the law.”

But how are US and Indian industries comparable, then, if India's economy is arguably a platform for production of US-owned intellectual assets? What are the odds that Indian companies will actually own their resulting innovations stemming from foreign investments? Presumably not very high.

And what sets of choices has India made to reflect its own sets of cultural values and principles in contrast to those of the US?

Consequences of a weak IP regime and over-regulation

Within his recent research paper, Shapiro recounts Indian laws related to IPR over the years and how the country's weak international IP regime has paved the way for its thriving generic pharmaceutical industry. Through enforcing restrictions on patent filings, shorter patent terms, and compulsory licensing, the Indian Patent Office enabled the manufacturing of domestic pharmaceutical products without having to pay outgoing royalty (or to a lesser degree) in promotion of increased access to medicines for Indians at much more affordable prices.

Shapiro argues that this disregard for foreign IPR discourages foreign companies from wanting to enter the Indian market in the future for fear of imitation products coming about to their detriment. Shapiro argues that if India adopted stronger IP rights and enforcement, FDI to the country's pharmaceutical industry would increase drastically; more so, if India adopted an IP system comparable to the US, FDI flows could even rise by 83 per cent per year, making it a centre for innovative pharmaceutical R&D. Just as well its access to new innovative drugs would increase by 5 per cent, contributing to a higher life expectancy and a larger work force (Shapiro, p. 3, 2014).

An IP regime comparable to the US and Europe, Shapiro suggests, promotes both endogenous and exogenous growth while bringing about competitive markets “with pockets of monopolies throughout.” Such [patent] regimes have evolved over decades and “simply work well,” he states. Also, in requiring patent applicants to publish all secrets—that which makes the invention novel—others are given the ability to benefit from such knowledge.

So then, is India wrong in making decisions in accordance with its own set of cultural values and principles if they are not necessarily in accordance with those of the US?

Arguably not. However, as Shapiro demonstrates, such decisions may bare consequence in India's pursuit to modernize as a member of the World Trade Organization (WTO) that is not exactly in compliance with Trade Related Aspects of Intellectual Property (TRIPS) standards. India may also be missing out on greater importation of technologies if foreign companies fear that their products will be imitated by local companies. According to Shapiro, India's services sector (including banking, insurance, outsourcing, R&D, courier and technology testing services) contribute to 60 per cent of the country's GDP, yet have declined in FDI for several reasons including the country's weak IP regime, as well as government regulations capping the maximum investments of foreign companies (Shapiro, p. 37, 2014).

Which brings us to the notion of market deregulation as a mechanism of promoting FDI. Shapiro suggests this to be essential for India to enable a more even playing ground for new and emerging players to compete. A regulatory issue arises when new companies are up against companies receiving government subsidies. In this way, such regulations may also prohibit companies from reorganizing to implement new technologies or practices, undermining the spillover effects that FDI can bring about.

IPR adoption vs. innovation

Shapiro stresses the importance in not only allowing companies to implement new technologies, but to encourage them to do so as well. A common mistake developing countries make, he says, is trying to be the source of innovation: “Although it's nice to be the source of innovation, what is more important is to adopt innovation of others.” In response, a contribution to discussion made by a fellow attendee commented on the inclination of developing countries to first duplicate, then adapt, and then innovate for themselves.

So what is India left to do then? How do Indian companies navigate along the fine line distinguishing between adopting new technologies and duplicating them? And if innovation is so integral to a country's economy, will merely adopting and adapting to emerging foreign technologies suffice for the country's economy? Or can India only progress away from “duplication” with stricter IPR enforcement?

While citing studies based in Europe, Shapiro illustrates the relationship between IP regimes and inventions. The study's findings displayed that while there is no relationship between IPR and occurrences of inventions, there is correlation between IPR and the kinds of inventions. Jurisdictions with strict IP laws and greater IP protection were likelier to bring about inventions with significant business value, while the inventions of other jurisdictions without IPR did not entail the same level of business value—one cannot simply reverse-engineer a food invention for study, he says.

This is not as to say that Indian companies cannot innovate. “India has a lot of innovators,” Shapiro says, “but they're in California and New York and Washington.” Even in these hubs for innovation, the Indian demographic is highly disproportionate, and estimated to be 20-40 per cent of the workforce, suggesting the potential of Indians in terms of innovation. Shapiro poses the question: “Why are they leaving?” and stresses the importance in India understanding this phenomenon.

The modernization tradeoff

Is the departure of some of India's innovators another consequence of the country's path to modernization whilst maintaining cultural values? Just as some foreign pharmaceutical companies may stay far away from the Indian market?

If so, is India truly better off in striving for redemption from under the close watch of the US and in pursuit of foreign direct investment? What opportunities or cultural values might be abandoned within the domestic market in favour of foreign bodies, then? And more specifically, what would a stricter IP regime mean for the future of the generic pharmaceutical industry, and in turn, the cost of access for medicines that are presently only affordable through the bypassing of international IP standards?

Just as Shapiro gives importance to the consideration of political and cultural factors at play within one's economy, it is, then, essential to look beyond what the US wants for India economically to factor in what India wants for its own economy and the cultural and political reasons for such. I think we can both agree on the significance of India considering the consequences of resulting economic decisions (i.e., regarding market regulating and IP enforcement) from proxies inclusive of Indian consumers, as well as international bodies to the extent of the global systems that India is implicated in.

But what about the question of innovation for India's economy? In the tradeoff between innovation (and prosperity) versus duplication (and accessibility), is a country of 1.2 billion people with different cultural values and economic needs really fair game to be idealized as “comparable to the US” in terms of its economic laws? Economist Robert Shapiro seems to think so.

For more details visit https://cis-india.org/a2k/blogs/cultural-interests-v-international-economy-robert-shapiro-on-ipr-innovation-in-india