Monthly Archives: December 2014

IPR Helpdesk Of India

IPR Helpdesk Of IndiaThe IPR Helpdesk of India is a techno legal initiative of Perry4Law Organisation (P4LO) and Perry4Law’s Techno Legal Base (PTLB). IPR Helpdesk was launched in the year 2007 when it celebrated the renowned World IP Day of World Intellectual Property Organisation (WIPO).

Some of the public awareness initiatives of IPR Helpdesk of India include celebration of WIPO Week-2007(Please read here1 and here2 in this regard), providing of Intellectual Property Rights Trends in India-2007, celebration of World IP Day 2008 Of WIPO as WIPO Week- 2008, celebration of World IP Day 2009 Of WIPO, suggestions on proposed rulemaking by United State Copyright office for Section 1201 exemptions to prohibition against circumvention of technological measures protecting copyrighted works, etc.

Perry4Law Organisation has also provided its suggestions to both national and international governments on various IPR related fields. For instance, Perry4Law has provided its suggestions to U.S. Copyright Office on Small Claims (PDF) and Orphan Works (PDF). Similarly, the Discussion Paper on E-commerce in India (PDF) by Department of Industrial Policy and Promotion (DIPP) has also cited Perry4Law Organisation’s research works and articles while discussing the legal framework of e-commerce in India.

The IPR Helpdesk of India has been rejuvenated by Perry4Law Organisation and PTLB in the year 2014. It main objective is to spread public awareness about IPR issues in general and their techno legal aspects in particular. It is the exclusive techno legal IPR Helpdesk of India that has been operating for almost a decade.

Please see the IPR Helpdesk of India for the Twitter updates and other relevant IPR related information. We hope various stakeholders would find this initiative of P4LO and PTLB useful.

Proposed US Rulemaking For Section 1201 Exemptions To Prohibition Against Circumvention of Technological Measures Protecting Copyrighted Works

Proposed US Rulemaking For Section 1201 Exemptions To Prohibition Against Circumvention of Technological Measures Protecting Copyrighted WorksDigital rights management systems (DRMS) are widely used across the globe to protect copyrighted works from unauthorised access and copying. Anti piracy and copyright infringement has become a major challenge for copyright holders and the enforcement agencies. Digital rights management systems (DRMS) have been introduced as part of the solution to the problem of online copyright violations.

Intellectual property rights (IPRs) issues in digital era are very complicated and require a different set of legal and regulatory framework. Their effective protection requires both technological and legal measures. We at Perry4Law organisation, Perry4Law Law Firm and PTLB believe that India needs a techno legal framework to deal with online legal issues.

Indian government is in the process of formulating the national IPR Policy of India and the same maybe released very soon. In fact, the first draft (PDF) of the policy has already been issued by IPR think tank constituted in this regard. We believe that the IPR policy must keep in mind the technology issues as well that have not been properly addressed by Indian government so far.

IPR Helpdesk of Perry4Law and PTLB has been actively engaged in spreading IPR awareness at national and international level for many years. In this work we are discussing the United State’s proposed rulemaking for Section 1201 exemptions to prohibition against circumvention of technological measures protecting copyrighted works. Those who are interested in reading about US Copyright law can also read the Compendium of U.S. Copyright Office Practices, Third Edition in this regard.

The successful rulemaking would allow the Librarian of Congress, upon the recommendation of the Register of Copyrights, to exempt certain classes of works from the prohibition against circumvention of technological measures that control access to copyrighted works. The ultimate goal of the proceeding is to determine whether there are particular classes of works as to which users are, or are likely to be, adversely affected in their ability to make non infringing uses due to the prohibition on circumvention of access controls. When such classes are identified, the Librarian publishes a rule exempting the classes from the prohibition against circumvention for the succeeding three-year period.

On December 12, 2014, the Office issued a Notice of Proposed Rulemaking (“NPRM”) initiating three rounds of public comment on the proposed classes including submission of documentary and multimedia evidence. Persons wishing to address proposed exemptions should carefully review the Notice of Inquiry to familiarise themselves with the substantive legal and evidentiary standards for the granting of an exemption under section 1201(a) (1). Stakeholders can submit their comments from time to time as per the requirements of the rulemaking.

The first round of public comment closes on February 6, 2015, and is limited to submissions from the proponents (i.e., those parties who proposed exemptions during the petition phase) and other members of the public who support the adoption of a proposed exemption, as well as any members of the public who neither support nor oppose an exemption but seek only to share pertinent information about a specific proposal. Any associated documentary and/or multimedia evidence must also be submitted by this date.

The second round of public comment closes on March 27, 2015, and will be limited to members of the public who oppose an exemption. Opponents should present the full legal and evidentiary basis for their opposition.  Any associated documentary and/or multimedia evidence must also be submitted by this date.

The third round of public comment closes on May 1, 2015, and will be limited to proponents and supporters of particular proposals, and those who neither support nor oppose a proposal, in either case who seek to reply to points made in the earlier rounds of comments. Reply comments should not raise new matters, but instead be limited to addressing arguments and evidence presented by others. Any associated documentary and/or multimedia evidence must also be submitted by this date.

The U.S. Copyright Office has categorised the proposals for exemptions received in response to its September 17, 2014 Notice (PDF) into twenty-seven proposed classes (PDF) of exemptions for further consideration. Commenters are required to provide separate submissions for each proposed class during each stage of the public comment period. Although a single comment may not encompass more than one proposed class, the same party may submit comments on multiple classes.

The Office is accepting comments in two ways. First, commenters who wish to provide a full legal and evidentiary basis for their position may submit comments in a long form format. Such comments should be limited to no more than 25 pages in length (which may be single-spaced but should be in at least 12-point type), not including any documentary evidence. To assist participants, the Office has provided a recommended long comment form (doc).

Second, for those commenters who wish to briefly express general support for or opposition to a proposed exemption, the Office is providing a recommended short comment form (doc). Short comments should be limited to no more than one page (which may be single-spaced but should be in at least 12-point type).

Comments and associated documentary evidence (but not multimedia evidence) should be uploaded as a single combined file via the comment submission page. Commenters submitting long form comments may also separately submit multimedia evidence. Multimedia evidence must be submitted separately via U.S. mail or hand delivered to the Office, on specified digital media, in an approved file format and labeled as described in the NPRM. Commenters should carefully review the NPRM for more detailed information concerning the recommended format and content of submissions, including documentary and multimedia evidence.

To meet accessibility standards, all comments and associated documentary evidence must be uploaded in a single file in either the Portable Document File (PDF) format that contains searchable, accessible text (not an image); Microsoft Word; WordPerfect; Rich Text Format (RTF); or ASCII text file format (not a scanned document). The maximum file size is 6 megabytes (MB). The name of the submitter (and organisation) should appear on both the form below and the face of the comment. Commenters should use the “Browse/Choose File” button on the form below to attach the comment file to the form and then to submit the completed form to the Office.  If a commenter cannot meet a particular submission requirement, the commenter should contact the Office at 202-707-8350 for special instructions.

The Office intends to post the written comments and documentary evidence on its website in the form in which they are received. Parties should keep in mind that any private, confidential, or personally identifiable information appearing in their comment will be accessible to the public.

We would list all our comments and suggestions in this regard at this place so that a comprehensive coverage of this issue by us is possible. This would also help in consolidation of our comments and suggestions so that various stakeholders can use the same in the best possible manner.

Regulation Of Trafficking In Fraudulent Medicine By UNODC

Regulation Of Trafficking In Fraudulent Medicine By UNODCCounterfeiting medicines are serious health hazard and they should be strictly regulated world over. At the same time there should be a clear definition and regulatory framework to identify, locate and seize counterfeiting medicines and those manufacturing and dealing with the same. While doing so care must be taken to differentiate between counterfeiting medicines and generic drugs and medicines.

United Nations Office on Drugs and Crime (UNODC) has been dealing with counterfeiting drugs and fraudulent medicines for long. UNODC has been working in the direction of curbing trafficking in fraudulent medicines (PDF) and the resolution 20-6 of UNODC on countering fraudulent medicines and their trafficking (PDF) shows the commitment of UNODC in this regard. UNODC’s technical meeting of experts on the trafficking in fraudulent medicine (PDF) has already been convened in this regard.

In 2012, the WHO Resolution on Substandard, Spurious, Falsely-Labelled, Falsified-Counterfeit Medical Products on 130th Session 2012 (PDF) was passed. The resolution decided to establish a new Member State mechanism for international collaboration among Member States, from a public health perspective, excluding trade and intellectual property considerations, regarding “substandard/spurious/falsely-labelled/falsified/counterfeit medical products”.

The WHO resolution was the result of confiscation of Indian off-patent generic drug consignments by some European countries customs authorities for violation of intellectual property rights (IPRs). Reacting to confiscation, India and Brazil filed a case against the EU in the World Trade Organisation (WTO) protesting the action.

India and EU also decided to sign a Letter of Understanding and as per the understanding, none of the customs authorities in the 27-nation EU bloc would confiscate any drug dispatch meant for third country destinations like Latin America or Africa. In exchange India assured that it would not file any WTO dispute in this regard at WTO. In addition, EU also agreed to India’s request for adoption of guidelines which would confirm the principles agreed to in the Understanding with a view to give greater and immediate legal certainty for producers and traders. EU also agreed to reflect the principles contained in the Understanding in its proposal for a new Regulation to replace Regulation 1383/2003.

However, the latest development at UNODC resulting in involving IPRs issues in the fraudulent medicines has complicated the scenario further. India led BRICS has strongly opposed this move of UNODC. Let us see how the matter would be resolved at the international level.

US India IPR Rift Lessens Ahead Of Obama’s Visit

US India IPR Rift Lessens Ahead Of Obama’s VisitUnited States (US) is persistently criticising India for its allegedly poor intellectual property rights (IPRs) protection and enforcement. Despite the contrary stand of US, India has been managing its IPRs regime very effectively and as per international norms. Nevertheless US has been consistent in putting India under the “Priority Watch List (PWL)” category in its Special 301 Reports from time to time. It was also declared that a proposed legislation would target companies using stolen IPRs of US.

However, India has its own shares of problems when it comes to IPRs protection and management by US and US companies. There is no doubt that US needs to change its policy towards foreign IPRs violations as well. Many online service providers (OSPs) and companies in US are not complying with laws of other jurisdictions like India and are not complying with DMCA requirements. They cannot hide behind conflict of laws in cyberspace for long and US needs to address this issue as well while agitating against India.

Recently the WTO dispute between US and India regarding certain hot-rolled carbon steel flat products from India was decided by WTO. It was a mixed decision where both US and India gained in some aspects and lost in others. Meanwhile, India decided to formulate the IPR Policy of India to address national and international concerns. It would be a good idea to include technology issues of IPRs in the proposed IPRs policy of India as well.

In the USTR 2014 Special 301 Report to Congress (PDF) US maintained that India deserves to be kept under the PWL category. However, ahead of President Obama’s visit, US has softened its stand in this regard. After a special review, US is now satisfied with the efforts of India in the direction of IPRs protection and enforcement.

The US Trade Representative (USTR) believes that India has made useful commitments in recent months, including institutionalizing high-level engagement on IP issues, to pursue a specific work program and to deepen cooperation and information exchange with the US on IP related issues under the US India Trade Policy Forum. The USTR has also announced closure of the out-of-cycle review of India’s trade and intellectual property rights practices, noting the progress made in recent months.

We at Perry4Law and Perry4Law’s Techno Legal Base (PTLB) welcome this move of US. This is a good step in the right direction and it would help in strengthening of India US ties further. Let us see what the proposed national IPRs policy of India would suggest in this regard.

WTO Dispute Regarding Countervailing Measures On Certain Hot-Rolled Carbon Steel Flat Products From India- Dispute DS436

WTO Dispute Regarding Countervailing Measures On Certain Hot-Rolled Carbon Steel Flat Products From India- Dispute DS436India and United States (U.S.) were pursuing a dispute before the World Trade Organisation (WTO) pertaining to certain hot-rolled carbon steel flat products exported from India to U.S. The final report of the Appellate Body has been released on 8th December 2014. Please see the document United States – Countervailing Measures on Certain Hot-Rolled Carbon Steel Flat Products from India – AB-2014-7 -Report of the Appellate Body (PDF) for more details. A summary of the same is available as WTO Summary of the Dispute Settlement of Dispute No DS436 between India and US (PDF).

This decision is a mixed one where India prevailed over U.S. on few issues while U.S. prevailed over India on others. Nevertheless it is a big relief for Indian steel exporters who were facing uncertainties till now. IPR Helpdesk of Perry4Law and PTLB is providing the crux of this decision in this work for the larger benefit of all stakeholders.

The key findings and conclusions of the Appellate Body are:

For the reasons set out in this Report, the Appellate Body:

(a) With respect to the Panel’s findings regarding the term “public body” under Article 1.1(a)(1) of the SCM Agreement:

(i) Reverses the Panel’s finding, in paragraphs 7.89 and 8.3.c.i of the Panel Report, rejecting India’s claim that the USDOC’s determination that the NMDC is a public body is inconsistent with Article 1.1(a)(1) of the SCM Agreement; and

(ii) Completes the legal analysis and finds that the USDOC’s determination that the NMDC is a public body is inconsistent with Article 1.1(a)(1) of the SCM Agreement;

(b) With respect to the Panel’s findings regarding financial contribution under Article 1.1(a)(1)(i) and (iii) of the SCM Agreement:

(i) Upholds the Panel’s finding, in paragraphs 7.241 and 8.3.d.i of the Panel Report, rejecting India’s claim that the USDOC’s determination that the GOI provided goods through the grant of mining rights for iron ore and coal is inconsistent with Article 1.1(a)(1)(iii) of the SCM Agreement; and

(ii) Upholds the Panel’s finding, in paragraphs 7.297 and 8.3.e.ii(1) of the Panel Report, rejecting India’s claim that the USDOC’s determination that the SDF Managing Committee provided direct transfers of funds is inconsistent with Article 1.1(a)(1)(i) of the SCM Agreement;

(c) With respect to the Panel’s “as such” findings regarding benefit under Article 14(d) of the SCM Agreement:

(i) Upholds the Panel’s finding, in paragraph 7.35 of the Panel Report, rejecting India’s claim that the US benchmarking mechanism is inconsistent with Article 14(d) of the SCM Agreement because it fails to require investigating authorities to assess the adequacy of remuneration from the perspective of the government provider before assessing whether a benefit has been conferred on the recipient;

(ii) Upholds, albeit for different reasons, the Panel’s finding, in paragraph 7.46 of the Panel Report, rejecting India’s claim that the US benchmarking mechanism is inconsistent “as such” with Article 14(d) of the SCM Agreement because it excludes the use of government prices as benchmarks;

(iii) Upholds the Panel’s finding, in paragraph 7.52 of the Panel Report, rejecting India’s claim that the use of “world market prices” as Tier II benchmarks provided for in Section 351.511(a)(2)(ii) of the US Regulations is inconsistent “as such” with Article 14(d) of the SCM Agreement; and

(iv) upholds, albeit for different reasons, the Panel’s finding, in paragraph 7.63 of the Panel Report, rejecting India’s claim that the mandatory use of “as delivered” benchmarks provided for in Section 351.511(a)(2)(iv) of the US Regulations is inconsistent “as such” with Article 14(d) of the SCM Agreement;

(d) With respect to the Panel’s “as applied” findings regarding benefit under Article 14 of the SCM Agreement:

(i) Declares moot and of no legal effect the Panel’s alternative findings, in paragraphs 7.160-7.165 of the Panel Report, on the ex post rationales put forward by the United States to justify the USDOC’s failure to consider certain domestic pricing information in assessing whether the NMDC provided iron ore for less than adequate remuneration;

(ii) Reverses the Panel’s findings, in paragraphs 7.189 and 7.192 of the Panel Report, rejecting India’s claims that the USDOC’s exclusion of the NMDC’s export prices in determining a Tier II benchmark is inconsistent with Article 14(d) and the chapeau of Article 14 of the SCM Agreement; and completes the legal analysis and finds that the USDOC’s exclusion of such prices is inconsistent with Article 14(d) and the chapeau of Article 14 of the SCM Agreement;

(iii) Reverses the Panel’s findings, in paragraphs 7.183 and 7.185 of the Panel Report, rejecting India’s claim that the USDOC’s use of “as delivered” prices from Australia and Brazil in assessing whether the NMDC provided iron ore for less than adequate remuneration is inconsistent with Article 14(d) of the SCM Agreement; and completes the legal analysis and finds that the USDOC’s use of such prices is inconsistent with Article 14(d) of the SCM Agreement;

(iv) Upholds the Panel’s finding, in paragraph 7.260 of the Panel Report, rejecting India’s claim that the USDOC’s construction of government prices for iron ore and coal is inconsistent with Articles 1.1(b) and 14(d) of the SCM Agreement; and

(v) Reverses the Panel’s finding, in paragraph 7.313 of the Panel Report, rejecting India’s claim as it relates to the USDOC’s determination that loans provided under the SDF conferred a benefit within the meaning of Articles 1.1(b) and 14(b) of the SCM Agreement, and finds that it is unable to complete the legal analysis;

(e) With respect to the Panel’s findings regarding specificity under Article 2.1(c) of the SCM Agreement:

(i) Upholds the Panel’s finding, in paragraph 7.135 of the Panel Report, that there was no obligation on the USDOC to establish that only a “limited number” within the set of “certain enterprises” actually used the subsidy programme;

(ii) Upholds the Panel’s finding, in paragraph 7.126 of the Panel Report, rejecting India’s argument that specificity must be established on the basis of discrimination in favour of “certain enterprises” against a broader category of other, similarly situated entities; and

(iii) Upholds the Panel’s finding, in paragraph 7.133 of the Panel Report, rejecting India’s argument that, if the inherent characteristics of the subsidized good limit the possible use of the subsidy to a certain industry, the subsidy will not be specific unless access to this subsidy is further limited to a subset of this industry;

(f) With respect to the Panel’s findings regarding the use of “facts available” under Article 12.7 of the SCM Agreement:

(i) Modifies the Panel’s interpretation of Article 12.7 of the SCM Agreement, in Section 7.7.5.1 of the Panel Report, and finds that Article 12.7 requires an investigating authority to use facts available that reasonably replace the missing necessary information with a view to arriving at an accurate determination, and that this also includes an evaluation of available evidence;

(ii) Finds that the Panel failed to comply with its duty under Article 11 of the DSU to make an objective assessment of the matter before it, and therefore reverses the Panel’s finding, in paragraphs 7.445 and 8.3.h of the Panel Report, that India failed to establish a prima facie case that Section 1677e(b) of the US Statute and Section 351.308(a)-(c) of the US Regulations are inconsistent “as such” with Article 12.7 of the SCM Agreement; and completes the legal analysis and finds that India has not established that Section 1677e(b) of the US Statute and Section 351.308(a)-(c) of the US Regulations are inconsistent “as such” with Article 12.7 of the SCM Agreement; and

(iii) Upholds the Panel’s finding, in paragraph 7.450 of the Panel Report, that India failed to establish a prima facie case of inconsistency with Article 12.7 of the SCM Agreement;

(g) With respect to the Panel’s findings regarding the USDOC’s examination of new subsidy allegations in administrative reviews:

(i) Upholds the Panel’s finding, in paragraphs 7.508 and 8.3.j of the Panel Report,  rejecting India’s claims that the USDOC’s examination of new subsidy allegations in administrative reviews related to the imports at issue is inconsistent with Articles 11.1, 13.1, 21.1, and 21.2 of the SCM Agreement; and

(ii) Reverses the Panel’s finding, in paragraphs 7.508 and 8.3.j of the Panel Report,  rejecting India’s claims that the USDOC’s examination of new subsidy allegations in administrative reviews related to the imports at issue is inconsistent with Articles 22.1 and 22.2 of the SCM Agreement, and finds that it is unable to complete the legal analysis in this regard;

(h) With respect to the Panel’s findings regarding “cross-cumulation” under Article 15.3 and Articles 15.1, 15.2, 15.4, and 15.5 of the SCM Agreement:

(i) Finds that the Panel did not err in finding that Article 15.3 and Articles 15.1, 15.2, 15.4, and 15.5 of the SCM Agreement do not authorize investigating authorities to assess cumulatively the effects of imports that are not subject to simultaneous countervailing duty investigations with the effects of imports that are subject to countervailing duty investigations; and

(ii) Finds that the Panel failed to comply with its duty under Article 11 of the DSU to make an objective assessment of the matter before it, and therefore reverses the Panel’s findings, in paragraphs 7.356, 7.369, 8.2.c, and 8.2.d of the Panel Report, that Section 1677(7)(G) of the US Statute is inconsistent “as such” with Article 15.3 and Articles 15.1, 15.2, 15.4, and 15.5 of the SCM Agreement; and completes the legal analysis and finds that Section 1677(7)(G)(iii) is inconsistent “as such” with Article 15.3 and Articles 15.1, 15.2, 15.4, and 15.5 of the SCM Agreement;

(i) Except for the findings in paragraphs 5.1.f.ii and 5.1.h.ii above, otherwise rejects all of India’s claims that the Panel failed to make an objective assessment of the matter before it, and therefore acted inconsistently with Article 11 of the DSU; and

(j) With respect to the Panel’s findings identified in paragraphs 5.1.c and 5.1.g above, rejects India’s claims that the Panel failed to provide a basic rationale for its findings, and therefore acted inconsistently with Article 12.7 of the DSU.

5.2. The Appellate Body recommends that the DSB request the United States to bring its measures found in this Report, and in the Panel Report as modified by this Report, to be inconsistent with its obligations under the SCM Agreement into conformity with that Agreement.

National IPR Policy Of India Needs To Be Techno Legal In Nature

National IPR Policy Of India Needs To Be Techno Legal In NatureThe Department of Industrial Policy and Promotion (DIPP) has been engaged in formulating the national IPR policy of India. It has already constituted an IPR Think Tank in this regard that would help DIPP in proper understanding and implementation of IPR related issues in India. Public comments were also invited by the DIPP and the last date for submission of the comments was 30-11-2014. As that date is over and the comments must have already been provided by the public, the Think Tank must be busy in formulating the national IPR policy of India.

We at Perry4Law and Perry4Law’s Techno Legal Base (PTLB) welcome this move of Indian government and we wish and hope that the IPR policy of India would be released very soon.

India has already been managing effectively her IPR related laws and obligations in conformity with international treaties and conventions. At the same time India is also maintaining a balance between the constitutional protections and her international treaty obligations. Despite contrary claims, Indian patent law is in conformity with her international obligations. India is not at all obliged to adhere to TRIPS plus provisions and her current IPRs laws are not only well written but are also adequately enforced.

However, information and communication technology (ICT) has introduced many unique and complex issues before the Indian government. The proposed national IPR policy of India may cover these issues as well. However, these challenges cannot be effectively tackled unless the proposed national IPR policy of India is techno legal in nature i.e. a policy that can take care of both technological and legal issues simultaneously.

India is presently struggling to deal with technological issues of IPRs in general and techno legal issues in particular. This may be counterproductive in the long term as India has embraced policy initiatives like Digital India and Internet of Things (IoT) (PDF). Conflict of laws in cyberspace has made the enforcement of IPRs really tough especially when online infringements are involved. Internet intermediary liability and cyber law due diligence (PDF) issues are also not properly addressed in India so far.

There is also a need to ensure that innovation must be adequately represented by skilled IPRs professionals. For instance, right now only patent agents are allowed to file patent applications besides the applicant in person. There is a need to allow lawyers to file patents applications as well as that would increase the scope and numbers of patents applications in India.

Further, the legal analysis of SP.Chockalingam v Controller of Patents & Anr and its legal consequences are still not clear. The judgment gives an interpretation that lawyers can act as a patent agents while dealing with patents related issues at the registry. This is logical as well as a lawyer who can represent her client for the most serious matters should not be disallowed to act as patent agent/attorney at the patent office. Lawyers can already appear on behalf of patent applicants in tribunals and courts and there is no sense in prohibiting them from appearing before the Controller/Patent Office. We believe that a positive clarification in this regard by the Indian government would be really helpful as that would help in facilitating the creation and recognition of more IPRs by various stakeholders through lawyers.

The proposed IPR policy must also ensure that applications are disposed of in a time bound and transparent manner. Applicants must be encouraged to use online filing system of the Patent/Trademark/Copyright offices. This would automate the process of filing and processing of various IPRs applications and would save time and energy of various stakeholders.

IPRs dispute resolution is another area that requires innovative and out of the box solutions. For instance, issues like small claims (PDF), orphan works (PDF), minor IPRs issues and disputes, etc can be effectively resolved through methods of online dispute resolution (ODR) and e-courts.  This would also help in effective implementation of National Litigation Policy of India (NLPI) as many disputes would be resolved out of the court itself.

Perry4Law and PTLB hope that the proposed national IPR policy of India would be comprehensive enough to cover techno legal issues as well as mentioned above.