L'Oreal takes MyDollarStore to High Court over illegal imports [India]

French cosmetics and toiletries giant L’Oreal has hauled discount retailer MyDollarStore to court over issues relating to intellectual property rights (IPR) and illegal imports, it is learnt. The company has filed a case against MyDollarStore in the Delhi High Court recently.

In recent times, MNCs have been upset over the move by retailers to import top global brands, claiming that this leads to loss of business opportunity, unfair competition and product cannibalisation. However, sources said hectic parleys are on between the two parties and the talks could lead to an out-of-court settlement.

MyDollarStore is a discount store chain which set up shop in 2004 and now has 47 stores across several cities. Most of the stores are located in malls and near Big Bazaar outlets. The chain plans to scale up presence across most Big Bazaar outlets. The discount store is associated with basement bargains in the US. MyDollarStore formats price products at Rs 99 and above in India, and are perceived as expensive by bargain seekers. While products are priced at $1 (approximately Rs 48.9) at a MyDollarStore outlet in the US, the same products sell at a higher rate in India owing to transportation costs and import tariffs. L’Oreal source said the company was concerned about protecting the properties of its brands, which include quality and consumer perception. “We distribute the brand in a way that ensures a certain value around it. An unplanned distribution creates confusion or leads to an unpleasant consumer experience which may work against our brand,” the source said. L’Oreal India has recorded an attractive growth rate of over 40% plus in the country, and globally it has identified India as one of its top five markets. Sources said the company fiercely guards its right to market and distribute its brands in India.

Several MNCs have invoked the Intellectual Property Rights (Imported Goods) Enforcement Rules 2007 Act to stop retailers from importing their foreign brands. Companies like Hindustan Unilever, L’Oreal, Lancome Perfumes, Oakley, Nivea and Mico have already registered several brands under notification No.47/2007 of the IPR Act with the Customs. Recently, Future Capital picked up 28% in Sankalp Retail Value Stores, a franchisee of the US-based discount format MyDollarStore. The format is expected to help scale up profit margins at Big Bazaar and is being set up as a ‘shop-in-shop’ concept. MyDollarStore outlets usually stock limited top brands like Coke and generally sell other lesser-known brands. But lately they have been stocking well-known brands, including that of L’Oreal like Garnier, etc. Big Bazaar & Food Bazaar, Reliance Retail, Spencer’s and MyDollarStore import sizeable consignments of top consumer brands and their variants from markets like Taiwan, Thailand, Gulf and the US. L’Oreal operates in India through its wholly-owned subsidiary L’Oreal India and has four divisions—consumer products, professional products, active cosmetics and luxury products.

Patent officers should coordinate to bring uniformity in standards [India]

Many of India’s pharma companies, including even the big and transnational ones who themselves have some stake in innovation and R&D, are alleging that patent authorities in India have become very liberal when it comes to grant of patents. Many frivolous patents have been granted and even bogus applications are being entertained, they say. The Indian Pharmaceutical Alliance, a group of big India-born drug companies, is mulling a thorough study of the patents granted since 2005 to find out how many of these are in fact ‘bad patents.’ At the other end of the scale, the foreign pharma companies not only brush aside the allegation of granting patents for ‘trivial inventions’ but also aver that “a lot of important applications” have in fact been turned down by India’s patent authorities. The question that underlies this row is what’s a ‘patentable invention’. At a very general and non-codified level, the newness or rather the surprise element of an invention should be the deciding factor.

The World Trade Organisation’s Trade-Related Intellectual Property Rights (TRIPS) agreement defines the term ‘patentable subject matter’ with due considerations to present-day commercial realities—it says an invention should be “new, involve an inventive step and capable of industrial application” to be deserving of a patent. National governments have drawn a lot of freedom from the TRIPS agreement itself and even autonomously to elaborate on the TRIPS definition. However, national laws of many countries, including the US, are framed in such a way that even “incremental, adaptive or cumulative” inventions could qualify for patents if such invention has a definitive industrial use and thereby considerable commercial value. Indian government has been chary about unfair patenting—thanks to lobbying by domestic industry and the unrelenting stand of leftist outfits. It introduced an additional provision—Section 3(d)—in Patents Act to make patenting criteria more stringent in the pharmaceutical space. This provision was introduced through the third amendment to the Act, which also introduced product patenting for pharma and agrochem inventions.

While the Big Pharma—the large pharmaceutical companies based in the US and EU who hold most of the patents—have been a strident critic of Section 3(d), international organisations like the World Intellectual Property Organisation endorsed it and termed it TRIPS-compliant. According to this provision, incremental inventions (like salts, isomers etc of known molecules) can be patented only if they have contributed to improve the efficacy of the (known) substance. And the patent authorities—read the examiners—would decide if efficacy has really been improved. The current strife over the allegation of the patent authorities practically becoming very liberal in grant of patents would need to be viewed in this context. The fact is India’s Patent Act, even with the fairly elaborate rules notified under it including those to support the Section 3(d), bestows substantial discretionary authority with the patent authorities. Patent examiners in India are still grappling with the complexity of the world of pharmaceutical inventions—the area is abstruse and dynamic enough to baffle even the seasoned examiners. Leaving a lot of things to the discretion of a group of patent examiners is therefore bound to generate conflicts. Here, what the government can do is to create many layers of examiners so that the probability of genuine error can be minimised. But the patent examination, search and grant system in India is currently highly unorganised. The four patent offices—Delhi, Mumbai, Kolkata and Chennai—are yet to achieve a fair degree of cohesiveness among them. These offices, manned by patent controllers and scores of patent examiners who assist them, are allegedly employing separate yardsticks and this is what caused the current allegations and counter-allegations. Clearly, there is a case for a very high degree of coordination between the four patent offices. Patents are anyway prone to contestation. Some disputes would inevitably reach the courts. Such disputes can however be minimised by bringing as much uniformity as possible in standards of patent grant. The Patent Act already provides for pre and post grant opposition and making a review plea before the controller who granted/denied the patent. And there’s the intellectual property appellate board, which is the body for the aggrieved to appeal to. What is lacking is proper coordination among the patent controllers and examiners. The government would do well to address the issue immediately.

ICANN to allow new top-level domains – warning to brand owners

The Internet Corporation for Assigned Names and Numbers (ICANN) is responsible for the allocation of all top-level domain names. There are presently only a limited number of top-level domains (e.g. .com, .net, .org etc) but ICANN has announced it intends to open the market for any person to create new top-level domains of their choosing.

ICANN has issued a draft "Applicant Guidebook" on which it is inviting comments. The draft guidebook may be seen here. ICANN is inviting comments from the public on the draft guidebook, and states that it will receive comments for 45 days (from 24 October 2008). The draft guidebook states that, during the (as yet undetermined) application period, any "established entity" from any country may apply to operate a top-level domain. The top-level domain proposed may either be an "open" domain, which is available to any type of applicant, or a "community based" domain, which must relate to an identifiable and pre-established community that has endorsed the registration of the domain. The application must show that the applicant will have a dedicated registration and use policy, and that the applicant has the operational, technical, financial and organisational capability to maintain the top-level domain proposed. The draft guidebook states that the proposed registration fee for the new top-level domain will be $185,000. Of particular interest to brand owners, the draft guidebook contains details of the proposed objection mechanism which will allow interested parties to challenge the registration of a new top-level domain. The proposed grounds of objection are:String Confusion Objection – existing operators of top-level domains can complain that a domain applied for is confusingly similar to an existing top-level domain; Legal Rights Objection – a "rightsholder" (which is not defined, but this is likely to mean a trade mark owner or someone with unregistered trade mark rights/reputation) may complain that a domain applied for infringes their rights; Morality and Public Order Objection – the parties who may complain about a domain applied for which is contrary to morality and public order are yet to be determined by ICANN, but they may be limited to Government bodies; and Community Objection – an "established institution" within a defined community may complain about a domain applied for which may be targeted at such community if a significant part of that community substantially objects to the application. The draft guidebook contains a long description of the proposed procedure to be followed if objections are raised to top-level domain applications. The procedure will involve arbitration with set rules similar to a UDRP arbitration that is operated by one of a number of providers (e.g. WIPO). The cost of the procedure is not outlined in the draft guidebook, but it is proposed that String Confusion and Legal Rights Objections should be dealt with by the arbitration provider for payment of a fixed fee, and other Objections should be dealt with for payment of an hourly rate. There is no procedure proposed to notify brand owners if a top-level domain is applied for which features a registered trade mark. As a result, brand owners will need proactively to monitor ICANN's website to see the applications that have been made. There is only a limited time period proposed in the guidebook during which objections may be made to applications. It is therefore very important that brand owners wishing to object to applications do so within the required time period. Otherwise, costly court action might be the only remedy available to brand owners after the new top-level domain is approved. Further information about the proposals may be seen on ICANN's website.

Congress Gets Tough On Intellectual Property [United States]

Lawmakers have approved sweeping legislation that is designed to bolster the federal government's ability to protect patents, trademarks, and other intellectual property (IP). The bipartisan legislation, the Prioritizing Resources & Organization for Intellectual Property Act (S. 3325), passed the Senate by unanimous consent on Sept. 26 and cleared the House by a vote of 381-41 two days later.

The bill significantly toughens civil and criminal laws against counterfeiting and piracy, provides law enforcement agencies with increased funding for investigations and prosecutions, and creates a new White House office of IP enforcement coordinator.

"IP makes up some of the most valuable and most vulnerable property we have," Senate Judiciary Committee Chairman Patrick Leahy (D-Vt.) said in a statement. "We need to do more to protect it from theft and abuse if we hope to continue being a world leader in innovation."

The bill is strongly supported by pharmaceutical companies, manufacturers, and others in the business community. "This is a win for both parties and, more important, for America's innovators, workers whose jobs rely on IP, and consumers who depend on safe and effective products," U.S. Chamber of Commerce President and Chief Executive Officer Thomas J. Donohue says.

It's unclear whether President George W. Bush will sign the legislation into law because the Administration opposes the provision that creates a new Cabinet-level post for IP coordination. According to the bill, the IP coordinator will be chair of an interagency committee tasked with devising a worldwide strategic plan to combat piracy and counterfeiting. However, in a joint letter sent to the leaders of the Senate Judiciary Committee on Sept. 23, the Justice and Commerce Departments says the establishment of an IP coordinator within the Executive Office of the President (EOP) is "objectionable" on constitutional grounds as a violation of separation of powers.

"While the Administration has been a longtime supporter of strong inter-agency coordination...the statutory creation of an EOP coordinator with the duties described in the bill constitutes a legislative intrusion into the internal structure and composition of the President's Administration," the letter states.

India - United States - Copyright Treaty [Intellectual Property]

Protections granted under the Indian Copyright Act apply to U.S. citizens just as it applies to Indian nationals. The current Indian Copyright Act entered into force in 1957 but it is based on the 1911 Copyright Act, which in turn was based on United Kingdom copyright laws. Traditional international copyright principles are part of the Indian copyright legislation. For instance, India grants automatic copyright protection (no registration is required) to literary, dramatic, musical and artistic works, computer software, and cinematograph films and sound recordings for sixty years- some term variations apply. Even though copyrights are automatic, authors may register their works in the Copyrights Register maintained by the Copyright Office of the Department of Education. Ideas are not protected under Indian copyright law nor are titles or names, short word combinations, slogans, short phrases, methods, news, and plots or factual information. To receive protection, works must be original; the joint authorship concept is recognized; and copyrights may be assigned for 5 year if no other time-limit is set. Usually, the author is the owner of the copyrighted work; the government is considered the author of government works. An author is the creator, composer, producer, or photographer -depending on the case, - of the work. In the case of employment-related works under contract of service or apprenticeships, the employer will be the copyright owner unless otherwise provided. Translations are afforded copyright protection just as the original work provided that they are authorized by the author of the original work. Computer programs are protected under Indian law as literary works, and their authors enjoy the right to sell, offer to sell, or give on hire "regardless of whether such a copy has been sold or given on hire on earlier occasion." In general, foreign works mentioned on the International Copyright Order are protected in India as well.

As opposed to the U.S., India grants protection of moral rights. This means, infringement exists when a copyrighted work is distorted, mutilated, modified and these or similar acts affect the author's honor or reputation. Moral rights remain with the author even after the author's death or assignment of the work.

India is signatory to the following international copyright agreements- this means U.S. citizens enjoy the rights and privileges afforded by these international agreements adopted by the Indian legislature,- (a) the Berne Convention for the Protection of Literary and Artistic works; (b) the Universal Copyright Convention; (c) the Convention for the Protection of Producers of Phonograms against Unauthorized Duplication of their Phonograms; (d) Multilateral Convention for the Avoidance of Double Taxation of Copyright Royalties; and (e) the Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement.

Indian International Copyright Order grants protection to foreign works from the following 116 countries. Indian protection of foreign works from these countries is relevant for U.S. businesses registered under the laws of any of them. E.g. if a U.S. business registered in St. Kitts & Nevis produces a copyrighted work and outsources some activity related to this work to India, India is going to protect that work as a foreign work. The International Copyright Order includes Albania, Argentina, Australia, Austria, Bahamas, Bahrain, Barbados, Belarus, Benin, Bolivia, Bosnia & Herzogovina, Botswana, Brazil, Bulgaria, Burkina Faso, Cameroon, Cape Verde, Central African Republic, Chile, China, Colombia, Congo, Costa Rica , Cote d'Ivoire, Croatia , Cuba, Cyprus, Czech Republic, Democratic Republic of the Congo, Denmark, Dominican Republic, Ecuador, Egypt, El Salvador, Equatorial Guinea, Estonia, Finland, France, Gabon, Gambia, Georgia, Germany, Ghana, Greece, Guatemala, Guinea, Guinea-Bissau, Guyana, Haiti, Holy See, Honduras ,Hungary, Iceland, Indonesia, Italy, Jamaica, Japan, Kenya, Latvia, Lesotho, Liberia, Libya, Lithuania , Luxembourg, Malawi, Malaysia, Mali, Malta, Mauritania, Mauritius, Mexico, Monaco, Mongolia, Morocco, Namibia, Netherlands, Niger, Nigeria, Norway, Panama, Paraguay, Peru, Philippines, Poland, Portugal, Republic of Korea, Republic of Moldova, Russian Federation, Rwanda, Saint Kitts & Nevis, Saint Lucia, Saint Vincent and the Grenadines, Senegal, Slovakia, Slovenia, South Africa, Spain, Sri Lanka, Suriname ,Sweden, Switzerland, Thailand, The Former Yugoslavia Republic of Macedonia, Togo, Trinidad and Tobago, Tunisia, Turkey, Ukraine, United Kingdom, United Republic of Tanzania, United States of America, Uruguay, Venezuela, Yugoslavia, Zambia, Zimbabwe.

Mattel blocks 'Scrabulous' in India [Intellectual Property]

The networking site, Facebook, has restricted the popular “add-on” application, ‘Scrabulous’ to most users. Mattel Inc. owns Scrabble rights outside Canada and the United States of America and had approached the Indian courts in February 2008, seeking an order for taking down Scrabulous from Facebook and other servers.

The brothers, Rajat and Jayant Agarwalla, and their web-design and technology company, R J Software, were previously served a lawsuit by game-making giant Hasbro Inc., owner of Scrabble rights in Canada and the U.S. , at a New York federal court for violating its copyright and trademarks. Hasbro also sent a notice demanding that Facebook remove the application from the site. “Facebook took the unfortunate decision to restrict most users from accessing Scrabulous on August 22, in response to a ‘take down notice’ from Mattel on August 14,” said Mr. Jayant.

Mr. Jayant said, “The High Court had reserved judgement in this matter after hearing both parties. It surprises us that Mattel chose to direct Facebook to take down Scrabulous without waiting for the High Court’s decision.” He also sounded disappointed with Facebook as he said, “It is even more astonishing that Facebook, which claims to be fair and neutral party, took the step even though they were fully aware of the circumstances under which the Mattel letter was sent.”

“We now await the decision of the High Court and shall accordingly decide our future course of action regarding Scrabulous,” Mr. Jayant asserted.

First Arab Satellite Channel On IP Rights Launched In Egypt

In a bid to promote awareness of intellectual property rights issues and provide information about IP in the Arab world, the first dedicated IP Arab satellite channel has been launched.
Based in Smart Village in Cairo with offices in most major cities of the world, the first independent IPR satellite channel will have exclusive programmes that tackle IPR issues regionally and globally.

The new channel, launched on 7 July and reporting in both Arabic and English, will broadcast on NileSat.

‘The idea behind establishing a satellite channel dedicated to IP rights is to strengthen awareness in IP issues and give a clearer image of the IP situation in the Arab world. The new satellite channel is intended to a credible source of information that satisfies the growing interest in issues relating to IP. It will also contribute to the promotion of IP awareness in the region and around the world,” said Talal Abu-Ghazaleh, chairman of the Talal Abu-Ghazaleh organisation, an Arab organisation for global professional services including intellectual property rights. Abu-Ghazaleh is owner of the new channel.

In 2004, Abu-Ghazaleh launched a one-of-a-kind project, the ag-IP-news agency, a specialised global intellectual property news agency.

Hasbro takes Facebook game Scrabulous to C-O-U-R-T [United States]

Game-making giant Hasbro has filed a lawsuit against Scrabble knock-off Scrabulous and sent a notice demanding Facebook remove the popular game from the social-networking website.
Scrabulous.com was launched by brothers Rajat and Jayant Agarwalla in India in 2005 and rocketed to popularity as a free "add-on" application for Facebook, where more than 500,000 people reportedly play the online word game daily.

Toy and game manufacturers Hasbro and Mattel, which share ownership of the Scrabble trademark, asked Facebook in January to remove the renegade online version of its game from the website.

On Thursday, Hasbro presented the request to Facebook in the form of a demand backed by US law regarding copyright infringement on the Internet.

Hasbro also filed a lawsuit against Scrabulous and the Agarwalla brothers in federal district court in New York. "Facebook has tried to use its status as neutral platform provider to help the parties come to an amicable agreement," the California-based website said in response to an AFP inquiry. "We're disappointed that Hasbro has sought to draw us into their dispute; nevertheless, we have forwarded their concerns to Scrabulous and requested their appropriate response."

The lawsuit is weak leverage against the brothers, since Scrabulous lists no assets in the United States and a court decision here would need backing by India's legal system to be enforced. "Our hope and expectation is that the parties can resolve their disagreements in a manner that satisfies the parties, that continues to offer a great experience to gamers and that doesn't discourage other developers from using our platform to share creativity and test new ideas," Facebook said.

The Agarwallas have said in public reports that they expect fans to remain loyal to Scrabulous, from which the siblings earn advertising revenues. Filing of the civil suit comes a week after videogame colossus Electronic Arts released, with Hasbro's blessing, a free online Scrabble game customized for Facebook websites in the United States and Canada.

Nobel laureate criticises intellectual property rights system [International]

US economist Joseph Stiglitz has warned that intellectual property rights are stifling innovation. According to the Intellectual Property Watch news service, the professor, who was awarded a 2001 Nobel Prize in Economic Sciences for his work on the relationship of information and markets, said at the opening of Manchester University's Institute for Science, Ethics and Innovation on Saturday that the intellectual property rights regime "closes down access to knowledge". It was clear, he said, that specific restrictions applied particularly in the patent system.

Stiglitz criticised the current approach of treating copyright and patent rights as "intellectual property". Intellectual property, he insisted, is public property and not something to be "owned". It is difficult to prevent others from enjoying its benefits, he said, because it is fundamentally different to, and should not be compared to, the ownership of physical property. This approach creates monopoly power over knowledge that is often abused. Stiglitz gave as an example the current "patent thicket" in software, which results in anyone who writes a successful software program being sued for alleged patent infringements.

Another problem Stiglitz highlighted was that "the social returns from innovation do not accord with the private returns associated with the patent system. The marginal benefit from innovation is that an idea may become available sooner than it might have. But the person who secures the patent on it wins a long-term monopoly, creating a gap between private and social returns". The system is widening the gap between developed countries and developing countries, claimed Stiglitz, who is also known as a critic of globalisation. Medical care in threshold countries is suffering because patent rights are preventing the production of cheaper generic medicines.

The Nobel Prize winner does not believe that the patent system should be abandoned altogether, but sees a possible solution in restricting property rights to defined, tangible areas as well as to specific countries. Tools such as prizes or government funding could be used to promote access to knowledge and spur innovation in areas where there are well-defined objectives - such as a cure for malaria. John Sulston, a Nobel Laureate in medicine, shares Stiglitz's concerns. He expressed his apprehension about the continued trend towards the private ownership of science and innovation, which was funnelling research into areas that were particularly profitable whilst areas less likely to make money were being ignored. IP is an ideological issue in quarters such as the WIPO (World Intellectual Property Organization), Sulston said. Drug companies see any improvements to the patent system as weakening it, but they forget that the system should be a “good servant” - and not elevated to a “theistic level".

In its latest annual report (PDF file), the International Chamber of Commerce (ICC) has now called for the business community to clarify the mechanisms of intellectual property rights for the benefit of the general public. The growing "politicisation" of the patent system and enforcement of copyright is bound to cause concern on the part of those who do not understand the system. The report says that business must focus greater attention on putting forward the very arguments that Stiglitz rejects, namely that commercial copyright not only encourages research and development but it also promotes transparency and the dissemination of knowledge.

WTO Ministerial Meeting: IP Compromise Remains Elusive

Compromise on intellectual property issues remained elusive at last week’s World Trade Organization ministerial meeting. An initial statement by the European Union initially identified GIs as a "poltical must have," along with agriculture, non-agricultural market access, and services. However, the US later announced that it does not intend to engage in negotiations on GI extension. "These TRIPS issues are important to many members, but we think it's vital to keep the focus of this meeting on agriculture, (manufactured goods), services. This meeting is not the time to create new mandates on the TRIPS issues," a spokesperson for US Trade Representative Susan Schwab reportedly said at a press briefing on 22 July.

Norwegian Foreign Minister Jonas Støre is continuing informal consultations on three intellectual property issues: 1) the multilateral register for wines’ and spirits’ geographical indications (GIs), 2) extending geographical indications protection beyond wines and spirits (“GI extension”), and 3) proposals to require patent applicants to disclose the origin of genetic material and traditional knowledge. Støre told Intellectual Property Watch late Thursday that movement on these issues would depend on progress on agriculture and non-agricultural market access.

The WTO's goal for this so-called "July 2008 package" was to agree on “modalities” in agriculture and non-agricultural market access (NAMA) — ie, the formulas and other methods to be used to cut tariffs and agricultural subsidies, and a range of related provisions — and to look at the next steps in concluding the Doha round of negotiations.

Free Japanese Patent Machine Translation Service

You can obtain English machine-translations for Japanese patent and utility model documents from 1993 onwards on the Japan Patent Office's free-of-charge "IPDL" (Industrial Property Digital Library) internet service at http://www.ipdl.inpit.go.jp/homepg_e.ipdl.

From the IPDL homepage, choose the "Patent & Utility Model Gazette DB" link. A simple number search will - as a first search result – return the PAJ English abstract, where available. Clicking the "Detail" button on the top of the result screen will start the machine-translation of the original Japanese unexamined application. Alternatively, clicking the "Japanese" button will display the original Japanese document. In cases where no PAJ English abstracts exist you will immediately get the machine-translation from the Japanese.

See the screenshots at http://www.jpo.go.jp/torikumi_e/hiroba_e/paj_15.htm

You can also try Yahoo! Babel Fish - Text Translation and Web Page Translation

LexisNexis offers a fee-based English machine translation service of Japanese patent documents "in minutes" at $39 per translated document (regardless of length).

Free Chinese Patent Machine Translation (CPMT) Service

The CPMT service is integrated with an English search interface and can be used for obtaining the English full text (including claims and specification) from a searched result (by previous human translation).

See the screenshots at http://www.cnpat.com.cn/430homepage/guidehome.html and then start by choosing “Patent Search and Machine Translation” from the homepage of China Patent Information Center (CPIC) at http://www.cnpat.com.cn/.

U.S. Copyright Office Offers Online Registrations

Beginning July 1, 2008, the Copyright Office is offering online registration of claims to copyright. Online registration through the electronic Copyright Office (eCO) is the preferred way to register basic claims for literary works; visual arts works; performing arts works, including motion pictures; sound recordings; and single serials. Advantages of online filing include a lower filing fee; the fastest processing time; online status tracking of your claim; secure payment by credit or debit card, electronic check, or Copyright Office deposit account; and the ability to upload certain categories of deposits directly into eCO as electronic files. To register your claim electronically, go to the Copyright Office website at http://www.copyright.gov/ and click on the eCO logo.

Foreign Outsourcing of Application Preparation May Require Export Administration Review [US}

According to the USPTO on July 23, 2008, applicants and registered patent practitioners are reminded that the export of subject matter abroad pursuant to a license from the United States Patent andTrademark Office (USPTO), such as a foreign filing license, is limited to purposes related to the filing of foreign patent applications. Applicants who are considering exporting subject matter abroad for the preparation of patent applications to be filed in the United States should contact the Bureau of Industry and Security (BIS) at the Department of Commerce for the appropriate clearances.

If an invention was made in the United States, technical data in the form of a patent application, or in any form, can only be exported for purposes related to the preparation, filing or possible filing and prosecution of a foreign patent application, after compliance with the Export Administration Regulations (governing exports of dual-use commodities, software, and technology, including technical data, which are codified at 15 CFR Parts 730–774) or following the appropriate USPTO foreign filing license procedure. See 37 CFR 5.11(c). A foreign filing license from the USPTO does not authorize the exporting of subject matter abroad for the preparation of patent applications to be filed in the United States.

Information regarding the EAR may be obtained from the BIS Web site at http://www.bis.doc.gov. Questions regarding the EAR should be directed to the BIS’s Outreach and Educational Services Division at (202) 482–4811.

Author's estate wins battle of Narnia domain name [UK]

A couple who bought a web domain name as a birthday present for their 11-year-old son have lost a battle with the estate of C.S. Lewis to keep it. Richard and Gillian Saville-Smith, from Edinburgh, paid £70 for the name www.narnia.mobi in September 2006 so that their son Comrie, who is a fan of C.S. Lewis, could use it as an e-mail address. The author's estate lodged a complaint with the World Intellectual Property Organisation, which ruled yesterday that the domain name should be transferred.

Companies had a three-month period in 2006 to express interest in .mobi website names before they became more widely available. The couple bought the Narnia name, along with a number of others, including The Queen.mobi and USPresident.mobi, “just for fun”.

Domain name disputes focus partly on whether a “cybersquatter” is using the site for commercial gain and whether trademarks are involved. Mr Saville-Smith claimed yesterday that he had done nothing at all with the site and had not tried to make any money from it.

Same script, 2 films: Big B movie caught in legal row [India]

Percept Picture Company has brought an injunction against UTV Motion Pictures, alleging that the idea of Shoojit Sircar's Shoebite was earlier sold to them as Johny Walker with Big B in the lead. But UTV representatives said they had not received any injunction order yet.

Shailendra Singh of Percept said, "We were to make Johny Walker with Amitabh Bachchan and Shoojit Sircar. Bachchan was even paid a signing amount but we couldn't manage to get the shooting dates and so the project was put on hold. We were very excited about the film, dealing with a pan-India subject, and our company even did a reconnaissance for it." Bachchan apparently even returned the signing amount to Percept and the whole matter was put behind by the company till it saw some promotional material of a film titled Shoebite, with Bachchan and Sarika in the lead. "A red alarm went off in my head," Singh said. "I realised that Shoebite looked identical to our film, Johny Walker." Singh said he tried calling UTV's Ronnie Screwvala but failed. Meanwhile, Percept gathered evidence to try and prove that Sircar had sold the same subject to UTV. Percept then did what it thought was correct; it took the matter to court. The official release from Percept Holdings said, "Percept approached the Delhi high court to protect its intellectual property in the script, Johny Walker, which has been registered. Counsel Rajiv Nayyar, instructed by Ameet Naik of Naik, Naik and Company, and Rishi Agarwal appeared for Percept. The Delhi high court was prima facie convinced that Shoojit Sircar disregarded the terms of his engagement with Percept and was making the Amitabh Bachchan-starrer, Shoebite, with UTV based on Percept's script. The high court granted an injunction, restraining UTV from infringing on Percept's copyright in the script and dialogue of the film, Johny Walker, in any manner, including by making the film, Shoebite, based on the script." It is an ex-parte injunction and a notice has been issued to UTV and Sircar. The court will next hear the matter on September 3. Trade reports say Shoebite is almost 60% complete, having finished schedules in Shimla and Nashik. UTV said it had not received any injunction order while Sircar remained unavailable for comment. Singh and Percept are, however, adamant that UTV will not be able to continue with the shooting/trading of Shoebite till the legal issues are sorted out. But what is the film, Shoebite, about?

Bachchan has written on his blog, "The film is a glimpse into the life of 60-year-old bookstore owner John Pereira, a man like most married men, who takes his wife of 40 years, Aditi, somewhat for granted. His entire world, however, turns upside down the day Aditi meets with a near-fatal accident and falls into deep coma. Sitting there by the side of her inert form, John decides to do something for her as an act of penance. Something extraordinary."

WIPO for private-public role to fight software piracy in India

The World Intellectual Property Organisation (WIPO), a specialised agency of UN, has said that the best solution to stop the software piracy in India, which has reportedly led to a loss of about two billion dollars in revenue last year, is public-private coordination.

Software piracy is a huge problem in India. As a result of which many global computer giants are facing the heat worldwide. The best possible way to put an end to software piracy in India is a close coordinated scheme between private and public sectors in the country, Director of Copyright Law at WIPO Jorgen Blomgvist told PTI.

A study by the Business Software Alliance (BSA), an international association representing the global software industry, in May showed that computer software piracy rates in India registered huge monetary losses in 2007.

Talks But No Breakthroughs Yet On IP Issues For Ministers At WTO [International]

Intellectual property issues have been a topic of debate at the World Trade Organization ministerial negotiations since Friday and while there have been no changes in positions there has been some talk of looking for compromises, according to sources attending the event. Ministers from some IP-proponent countries raised the issues as critical to the heads of delegation meeting on Monday, the first day of the mini-ministerial in Geneva, while opponents held a meeting of like-minded countries reinforcing their position against the inclusion of IP issues in the talks, sources said.

WTO Director General Pascal Lamy began on Friday to talk with officials about IP issues in an attempt to find a way to navigate the standstill on them, sources said. Lamy held meetings on Friday, Saturday and Sunday, they said. However, on Monday evening, the issue was not a primary topic of the Green Room meeting, the smaller, closed gathering held in Lamy’s office. The ministerial is scheduled to run from 21-27 July.

The focus in the next few days is expected to be squarely on the issues of agriculture and non-agricultural market access (NAMA) before IP issues become critical, if at all, according to several sources. But the outcome of the mini-ministerial (about 40 of the WTO’s 153 members) will be tied to addressing demands from the European Union, Switzerland, India, Brazil and others on issues related to intellectual property and trade.

The IP issues are: the creation of a mandated register on geographical indications - product names associated with a place and characteristics - for wines and spirits; extension to other products of the higher-level GI protections currently enjoyed by wines and spirits; and an amendment to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) to require the disclosure of origin of traditional knowledge and genetic material in patent applications, intended to bring TRIPS in line with the UN Convention on Biological Diversity (CBD).

A draft modalities text has been prepared by proponents, claiming support from a majority - over 100 - of WTO members (IPW, WTO/TRIPS, 18 July 2008). The text, TN/C/W/52, is now posted as a document to the WTO website. The opponents’ longstanding position favouring a voluntary register and database for consultation, referred to as the joint proposal, has been submitted again and posted as document TN/IP/W/10/rev.1.

A possible split in the IP issues may have been suggested by Lamy, according to sources. It generally has been the view that the GI register and the CBD amendment might have more middle ground for negotiating, while the GI extension might be more two-dimensional, sources said.

But such a split would not be acceptable to IP proponents, an official from a proponent country said. And the opponents’ meeting on Monday, which included countries such as Australia, Chile, Costa Rica, Mexico, New Zealand and the United States, reconfirmed the view that none of these issues should be discussed this week, according to a participant.

Cybersquatting: Don’t let your IP slip through the net

Cybersquatting is the practice of registering domain names incorporating trade marks of third party companies and then trying to sell the domain name back (for a handsome profit) to the trade mark proprietor. It's not going away - it's growing and it's a huge problem for trade mark proprietors.

The number of domain name disputes lodged in terms of the Uniform Domain Name Dispute Resolution Procedure (UDRP) that applies to .com, .net and .org domain names increased by 18% in 2007 compared to the number filed in 2006 and by 48% versus the number lodged in 2005.

The increase can be attributed to:
The rise of "pay-per-click" advertising, whereby cybersquatters associate the domain name they have registered with a website containing adverts promoting a variety of competing brands. Every time Internet users access this website and click on one of the adverts, the cybersquatter receives money.
Domain tasting, whereby cybersquatters register a number of domain names and then wait several days before paying for the domain names. They then count the domain names that attract the most Internet users and then pay for only for those. The remaining domain names are then deleted. Problem is, in the period between the cybersquatter registering and paying (or does not pay) for the domain name, it is reflected as being registered.
The use of privacy services by cybersquatters, who are thereby able to register domain names without revealing their identity to the general public. Cybersquatters can thus remain anonymous while trade mark proprietors must go to great lengths to establish the cybersquatter's identity.

There are a number of steps that companies can take to combat cybersquatting, the most important of which is to develop a domain name registration and conflict policy.

Such a policy would clearly identify relevant criteria to determine which domain names should be registered, whose responsibility it is to administer them and in which countries they should be registered.

As a general rule, companies should ensure that companies register their trade marks and trading names in the countries in which they trade, thereby preventing third parties from launching a website to sell competing goods and services under a domain name identical to a company's trade marks and trading names.

Not only should a company continually ensure that its most important trade marks and trading names are registered as domain names, but it should continually monitor what domain names have been registered that incorporate its trade marks and trading names.

In short, companies must monitor the domain name space to check what domain names have been registered that might incorporate their trade marks and domain names.

Internet domains to open up, prepare for .whatever [International]

"Dot-com," the ubiquitous term that has come to serve as a description for all things Internet-related, could be in the sunset of its heyday following a key decision on domain names.
The Internet Corporation for Assigned Names and Numbers, or Icann -- the body that regulates the Internet, voted unanimously on Thursday to ease up restrictions on domain names such as .com or .net.

The decision, made on the final day of week-long meetings in Paris, could trigger a frenzy of bidding as companies rush to claim domains like .investment or .travel. In fact almost anything could become a web address under the new rules -- from personal names to trademarked brands for major corporations. Be prepared for .news, .startrekfans and .somethinginappropriate.

Bidding wars for domain names are expected to reach well in the six-figures. "You can pretty much guarantee, unfortunately, (that) the most sought after one will probably be .sex," Bryan Glick of Computing Magazine said. Although, that could mean pornographic sites would move to their own neighbourhood on the web, making it more difficult to unintentionally stumble onto naughty sites. Individuals could get domains named after themselves so long as they could prove they have a business plan and "technical capacity" according to the plans for the system.
However, companies with intellectual property linked to a specific name will have first dibs on their own domain, like .ctv, for example. The new rules would mark a historic change from the current system where only .com, .net, .edu or .org are permitted, in addition to country domains like .ca or .au.
The new system could be in place as early as next year, but many details have to be worked out first.

Aslan et al take on Edinburgh couple for Narnia.mobi [UK]

A major test case on internet names is due to be resolved – with the couple who bought narnia.mobi taking on the company that owns the rights to CS Lewis' world-famous books. CS Lewis (Pte) Ltd contests that Richard and Gillian Saville-Smith are essentially cybersquatting by owning the domain – which they say they bought for their 11-year-old son Comrie.

"We were saving it as a surprise for our little boy's birthday – to coincide with the release of the new Narnia film – so that he could have one of the coolest email addresses in the world!" poet Mrs Saville-Smith told the BBC.

The domain was bought back in 2006, when the new .mobi domains came in and the case is being investigated by the World Intellectual Property Organisation (WIPO). CS Lewis (Pte) Ltd has insisted that Mr and Mrs Saville-Smith have been using the domain in 'bad faith' to make money, a claim which the couple, from Edinburgh, deny.

Artists' Resale Right in the News [United Kingdom]

The Artists' Resale Right hit the news again recently thanks to a letter to The Telegraph from a host of prominent British contemporary artists (including Damien Hirst) calling for the right to be extended to the estates of deceased artists.

Introduced two years ago, the right gives living artists a 4% slice of any sale proceeds when their work is resold later in their career. Though the drop-off in the London art market predicted by auction houses when the levy was introduced does not appear to have hit the fortunes of Sotheby's et al, this interesting piece from The Economist underlines some of the drawbacks of the resale right as well as its advantages.

Angiotech win boosts firms looking for patent protection in UK [Patent Law]

A decision by the House of Lords backing Angiotech Pharmaceuticals in a dispute with Conor MedSystems is being hailed as a groundbreaking decision that will make it easier for pharmaceutical firms to get patent protection in the UK.

According to Canada-based Angiotech, the Lords confirmed, “in a precedent-setting decision”, the validity of one of the firm’s patents related to its paclitaxel coated stents. The patent in question was granted in June 1997 and opposed by Conor and four other companies but after more than “nine years of legal battles, their challenge proved unsuccessful and the validity of the patent was maintained,” Angiotech notes. Then, in February 2005, Angiotech brought a lawsuit against Conor in the Netherlands and the latter responded by commencing proceedings in the UK to revoke the patent. Conor argued that the claims in the patent lacked “inventive step” (ie, were obvious) under UK law. Both the UK trial court and the UK Court of Appeal decided that the patent was indeed invalid so Angiotech appealed to the House of Lords which has upheld the validity of its patent and agreed with the Dutch court’s earlier decision that clarifies the obviousness standard in relation to innovations. Commenting on the case, Sue Streatfield, an intellectual property specialist at law firm Eversheds, said it could lead to “a lowering of the current threshold for achieving inventive step”. She noted that Lord Hoffman found that the test for the latter is to be determined by whether the product is obvious not whether it has the claimed effect. Therefore, “so long as a patent is sufficient, the test should not be affected by the amount of evidence the specification contains as to whether the invention will work,” Ms Streatfield added. The House of Lords decision, which was unanimous, reflects “an important development in bringing uniformity to the interpretation” across Europe, Angiotech added.

India's first IP auction symposium held [India]

CPA, the world's top intellectual property (IP) management specialist and the leading provider of outsourced legal support services, in conjunction with Ocean Tomo, hosted India's first ever "Live Intellectual Property Auction - Asian Simulcast and Symposium" in Bangalore, recently.

Nearly 65 lots of IP assets were offered for sale in 20 categories including smart cards, manufacturing and automation, online and mobile commerce, lighting technology, telemedicine, computer systems and software, digital media systems, domain names, security and authentication systems, messaging and electronics and handheld devices. Total sales for the live auction conducted in Amsterdam came to USD $12.6 Million (INR 544 Crore), including buyers premium.

Bhaskar Bagchi, Country Head, CPA, India, said, "The Simulcast and Symposium gave us a fantastic opportunity to showcase the importance of making IP a readily usable business asset and provided us with a platform to pull together organisations and thought leaders to think about the future of IP. Working hand-in-hand with Ocean Tomo to deliver such a momentous event further validates our commitment to help corporations carefully manage, maximize and understand their patent portfolio."

The symposium attracted participants from academia, government, large corporations and SMEs and also featured prominent speakers and senior IP professionals addressing the importance of India as a global player in the IP marketplace.

Dipanjan Nag, director, Ocean Tomo, said, "This is the first time that we have organised such an event in India and the support has been overwhelming. Our associations with bodies and organizations such as the Department of Industrial Policy & Promotion (DIPP), Department of Information Technology and CPA will help us reach our goals of introducing a forum for facilitating the open and public exchange of Intellectual Property."

Indian tech firms eye semi IP business [India]

Indian technology companies facing cost pressures from a global economic slump and domestic competition are seeking a way out by boosting R&D investments to develop semiconductor intellectual property.

Ittiam Systems and Cosmic Circuits are pursuing the pure IP route, having rejected the services business; service providers Wipro and Mindtree are now developing chip IP and are using it to attract new services around their IP products.

Ittiam Systems is India's largest pure IP company, focusing on advanced media communication applications for which software solutions are either unavailable or too expensive. Its IP includes synthesizable RTL cores that can be integrating into an ASIC being designed by its customers.

In 2005, Ittiam began investing in multi-format high-definition video decoder IP. The video decoder can handle most video standards, enabling SoCs for HDTV and HD-DVD applications," said Srini Rajam, Ittiam's chairman and CEO.

"Venture funds and investors believe that IP companies cannot scale in revenue," said Ganapathy Subramaniam, CEO of Cosmic Circuits, an analog semiconductor IP company. "ARM and Rambus have proven them wrong. But it is also a fact that while there are many IP companies in the world, only very few of them have been able to scale in revenue."

Cosmic has created over 75 analog IP cores for portable power management, video analog front-end, WLAN and WiMax analog front-ends. The company works with more than 10 foundries to create IP cores from 0.35 nm to 65 nm.

"India is slowly emerging from services and getting into the business model of licensing IPs," Subramaniam added. Market researcher Gartner Inc. ranks Wipro-NewLogic as the leading global provider of WLAN and Bluetooth IP, estimating that it holds two-thirds of the global market for IEEE 1394 IP cores. Wipro's chip IP arm is focusing on wireless and wireline connectivity.

"Developing IP is an important differentiation for the leading design service houses and...wireless communication, analog components and DSP-based IPs are the areas of promise for Indian companies," said A. Vasudevan, vice president of semiconductor and system solutions at Wipro Technologies.

Mindtree Ltd., which specializes in short-range wireless technologies, said it is focusing on Bluetooth IP. It has invested in ultrawideband technology, and plans to offer UWB IP in future products, according to S.N. Padmanabhan, senior vice president for semiconductors at Mindtree.
Mindtree also has several peripheral IP blocks usually bundled with the Bluetooth or UWB products. "The entry barrier is very low if someone has to build synthesizable IP at the RTL level," Padmanabhan said. "The semiconductor industry needs various IPs [and] smaller players can provide small, standards-based, popular IP blocks." Building IP blocks is the easy part, he added, noting that "marketing them is the toughest."

Sridhar Mitta, who headed Wipro's unsuccessful IP startup EnThink, acknowledged that India's track record for IP development is not good. "The [lessons] of EnThink are that product or IP companies will not get attention in large service companies," he said. "Indian companies will see IP business as an adjunct to their service businesses."

Matta said the best opportunities for Indian success in IP development are in volume markets like PCs or cellphones. Adopting standards and creating new ones will also boost India's IP efforts.

Gartner forecasts that Indian IP development will be dominated by big chip makers here as well as independent IP providers. "Some of the independent Indian IP providers are Wipro, Cosmic Circuits, Mindtree and HelloSoft," said Ganesh Ramamoorthy, Gartners' principal research analyst for semiconductor IP and design.

Big retailers at loggerheads with MNCs over brands [India]

serious conflict is brewing between Indian retailers and multinationals over imports of global brands. To stay afloat in the dog-eat-dog world of retail, local retailers have reached arrangements with overseas players to bring in some international brands, rattling many MNCs who manufacture or market these products locally. In some cases, these brands have not yet been introduced in India. Several major MNCs with a long presence in India are invoking the Intellectual Property Rights (imported goods) Enforcement Rules 2007 to stop retailers from importing foreign brands. Hindustan Unilever, L’Oreal, Lancome Perfumes, Oakley Inc, Nivea and Mico have already registered several brands with the Customs department. Sources said other MNCs are expected to follow suit. Market circles perceive this as a move to prevent Indian retailers from getting first access to these brands. Some of the retailers are debating plans to legally contest the move, since they possess a free sale certificate from the source of import. Retailers like Big Bazaar & Food Bazaar, Reliance Retail, Spencer’s and Sankalp Retail (MyDollarStore), among others, have begun importing sizeable consignments of leading consumer brands and their variants for better fill rates, product variety and higher margins.

However, the multinationals are not amused, and claim that it leads to loss of business opportunity, unfair competition and product cannibalisation. The fundamental issue here, according to analysts, is that the Indian arms of the leading FMCG companies would like to control the way their brands are marketed and sold. They would also like to determine when new products and variants of existing products should be introduced in India. Retailers sourcing directly from abroad disrupt the extent of control the FMCG companies can wield. The legal issue is whether IPR rules can be used to block such imports. The Customs department has the right to confiscate consignments and alert the owner of the IPR — which could be a trademark, design or patent. The 2007 rules are intended to protect IPR owners from violations of intellectual property by way of import of goods.

Virtual bites: Digital piracy and Bollywood [India]

On a trip to Helsinki in Finland, Rajjat Barjatya stumbled upon 15,000 Indian families who had regular access to Bollywood movies even when no production house was distributing them there.
"The families were paying monthly rent to a website that delivered the latest pirated Bollywood content," says Barjatya, who figured that the Indian entertainment sector was being plagiarised and producers who were spending millions on marketing and publicity were being robbed, virtually.

"There was a huge gap in demand and supply of Bollywood content to NRIs settled all over the globe," adds Barjatya, the managing director of Rajshri Media, the digital arm of Rajshri Productions.

Today, Barjatya is doing a roaring business among the NRI population settled in the US, UK and Canada. Success speaks for Barjatya. Rajshri's blockbuster film Hum Aapke Hain Kaun has been viewed over 500,000 times till date and can be downloaded for $4.99.

The website hosts over 6,000 hours of premium video content, all of which has been licensed from India's leading content owners and can be streamed free, ad-supported and downloaded at a nominal price between $4.99 and $9.99.

Barjatya has also unveiled 90 webisodes and mobisodes, of three minutes each, that will be available for free online streaming and as mobile downloads for Idea subscribers.

Piracy of intellectual property is not new to the media and entertainment sector. However, the scale of the problem is definitely new-fangled. A recent study estimates that the Indian entertainment industry loses $4 billion and more than 800,000 jobs each year because of piracy.
Not ready to give up on digital distribution just yet, entertainment majors such as Rajshri Media, UTV, YashRaj Studios, and Shemaroo Entertainment, among many others, are slowly building their digital roadmaps to tap the 5 million broadband-connected homes in India.

"First with music, and now with movies, as broadband capabilities expand, hundreds of thousands of copies race across the Internet daily, clearly harming producers and legitimate retailers," laments Siddharth Roy Kapur, CEO, UTV Motion Pictures.

In the US, the largest market for both Bollywood and non-Bollywood content, there are about 200,000 Indian millionaires, with some 15 per cent of Silicon Valley start-ups believed to be owned by Indians, according to a report by JPMorgan. UTV, informs Kapur, will look to target the overseas customers first with its digital offering.

Filmed entertainment executives have only to look at the music industry to see the dangers of insufficient action — take digital piracy seriously or lose billions as well as fundamental control of the value chain.

Barjatya probably read the warning signals in 2006. He released Rajshri's film Vivah online back in 2006 expanding his distribution for the 25 million Indians spread across the globe. "Physically reaching so many people is not possible and yet these are affluent NRI households with an appetite for Indian cinema. So, the Internet is the best medium to supply cinema as close to 51 per cent of NRI households have broadband access," mentions Barjatya.

Thanks to broadband penetration, digital theft has become free or costs as much as a writeable CD. Kapur acknowledges and says, "The rising number of user-generated sites like YouTube has made it easier to share videos. We do send notices to websites hosting illegal content and they respond favourably by taking off the content."

But the rising number of video-hosting sites also means that it is virtually impossible to keep track of illegal videos. Even as India's box office revenues are expected to swell up to $7.4 billion by 2010, according to PricewaterhouseCooper estimates, the downloaded content can garner more than $1.4 billion for the producers.

UTV is already rethinking its pricing strategy and release schedules for its online consumer by tightening digital distribution and security to control data leaks.

"We are working with technology companies to develop workable online distribution and rights management systems and to create easy-to-use channels at the right price," he says.

Technology can be a big help for the industry. Rising acceptance of peer-to-peer (P2P) networks among youth allows them access to one anothers' hard drives, enabling files to be freely copied or distributed from one computer to another. P2P networks do not use a central server and hence are difficult to track down, disable or prosecute.

For instance, when The Matrix Reloaded was released, pirates used a file-sharing computer programme called BitTorrent that let digital thieves download films for free within three hours of its release.

Rana Gupta, business head, Safenet, explains, "The impact of such incidents on a film's ultimate box-office and DVD performance is hard to gauge, but the longer you can prevent a scenario like this the better the return on investment for a studio."

Earlier this year, Ratatouille, the animated film from Walt Disney's Pixar, made its way online about 10 days before its release. Safenet's MediaSentry services help the studios in infringement management, early leak identification services, and various business intelligence tools to analyse data online.

"MediaSentry enables content producers to track down websites infringing copyrighted data," Gupta says. Simply put, Safenet's proprietary technology gets the digital addresses of those who download illegal files and this information is given to the Internet service providers (ISPs), which can ask the customer to stop.

Legal action has closed some sites that connect users with pirated movies. Motion Picture Association of America won its battle with TorrentSpy, a peer-to-peer site that is now closed. But Pirate Bay, a similar Sweden-based service, is still running. Pirate Bay creators say it is merely a platform and is neither uploading nor downloading proprietary content.

Back in India, Rajshri Media uses digital media rights (DRM) protection to prevent illegitimate duplication of its content, it isn't exactly foolproof. "We are focusing on bridging the demand gap and haven't really invested in protecting content from bootleggers. But we are evaluating various software techniques to make the Internet a more secure medium of distribution," adds Barjatya. It looks like a long way before Barjatya and Kapur can cast a virtual safety net over their digital assets. No one expects to eliminate piracy. But given that a film's opening weekend often accounts for 60 to 70 per cent of its earnings, every day's delay in the availability of pirated copies can make a big financial difference.

Ebay Ordered to Pay Damages for fakes [International]

Online auctioneer eBay has been ordered by a French court to pay over $61 million to fashion label - LVMH Moet Hennessy Louis Vuitton SA for selling counterfeit goods on its site. LVMH Moet Hennessy Louis Vuitton SA is home to prestigious brands such as Louis Vuitton, Givenchy, Fendi, Emilio Pucci, and Marc Jacobs. Allegedly, eBay had a sale of Louis Vuitton fakes; LVMH questioned whether the Internet is a free-for-all for the 'most hateful, parasitic practices'. eBay countered saying that LVMH's actions had more to do with protecting uncompetitive commercial practices at the costs of consumer choice and the livelihood of law-abiding sellers empowered by eBay than protesting against counterfeits.

A spokesperson for eBay said the auctioneer plans to appeal the ruling. All said, this isn't the first such instance of eBay having been sued by a luxury brand; past plaintiffs against the online auctioneer include the likes of Tiffany and Company (USA), Montres Rolex SA (Germany), and L'Oreal SA (Europe). eBay is like a magnet for counterfeiters mainly because of the sheer volume of products sold through its auction system as also the difficulty in patrolling fast-moving transactions. And like Google, eBay too relies on intellectual-property (IP) owners to alert the company about suspicious postings/products on its site. Nevertheless, the auctioneer maintains it spends millions of dollars every year trying to clean up fakes from its site.

Tech Giants Band Together to Buy and Sell Patents [International]

About eight years ago, Nathan Myhrvold, a former Microsoft exec started Intellectual Ventures, a company that amasses patents that it can then license. Several tech giants, including Nokia, Intel, Apple and Sony, invest money in the holding company’s war chest.

Now, several big tech companies are banding together in a slightly different patent-related venture. Verizon, Google and Cisco are among a group of companies joining up to defend themselves against patent-infringement suits by buying up patents before the so-called patent trolls get their hands on them.

Here’s how it works: The venture, called Allied Security Trust, buys patents that others might use to bring infringement claims against its members. Member companies will pay roughly $250,000 to join the group and will each put about $5 million into escrow with the organization, to go toward future patent purchases. Allied Security Trust will sell the patents they acquire after they’ve granted themselves a nonexclusive license to the underlying technology.

Intellectual Ventures: On the Prowl?

It might be the single company with the most patents that you’ve never heard of: Intellectual Ventures.

The six-year-old enterprise — the subject of a lengthy profile by Intellectual Property Law & Business — is the brainchild of Nathan Myhrvold, the former chief technologist at Microsoft. And its goal is singular: to amass dozens upon dozens of patents that it can license. (Intellectual Ventures claims to have no desire to manufacture or commercialize any products.) In March 2006, Myhrvold penned an opinion piece in the WSJ, “Inventors Have Rights Too.”

How does the company get its patents? Well, it buys a lot of them, with a $400 million war chest provided by a who’s who of tech companies: Nokia, Intel, Apple, Sony, and Microsoft. And according to the story, the secretive venture dreams them up, hiring fleets of consultants to brainstorming sessions on ideas in a variety of industries. Some in the IP asset management field estimate that Intellectual Ventures has amassed 3,000-5,000 patents.

But not everyone’s supportive of the company:
As the patent stockpile grows, so does the speculation–and the fear. IP lawyers and tech executives worry that Intellectual Ventures is less interested in changing the world with big ideas, and more focused on becoming an uber-troll, wreaking litigation havoc across industries with its patents.

The privately held company won’t discuss its finances. But if it doesn’t work out, Myhrvold probably won’t have trouble finding work. According to the story, the 47-year-old gajillionaire holds advanced degrees in theoretical and mathematical physics, mathematical economics, geophysics, and space physics. He studied quantum physics at Cambridge with Stephen Hawking, is a published nature photographer and “has had his state-of-the-art kitchen–and his recipes–featured in New York Times magazine.”

India, China attract clinical outsourcing'

Cost pressures, the need to tap global talent, and growth opportunities in emerging markets has led Western pharmaceutical companies to shift substantial manufacturing and clinical-trial works to India and China, according to a new study. Big pharmaceutical companies like Merck, Eli Lilly and Johnson and Johnson are now counting these two countries for advanced research and development, the study sponsored by the Ewing Marion Foundation said. Indian and Chinese scientists are rapidly innovating and creating their own intellectual property as a result of Research and Development activities, the report entitled 'The globalization of innovation: Pharmaceuticals. Can India and China Cure the Global Pharmaceutical Market".

In 2006, 5.5% of all global pharmaceutical patent applications (WIPO PCT applications) named one inventor or more were located in India, and 8.4% in China. This had increased fourfold from that in 1995. Through detailed interviews with executives of 16 pharmaceutical firms in China and India on their business models, value-chain activities, partnerships and technology capabilities, the researchers concluded that Indian and Chinese companies are making strides in most of the lucrative segments of global value chains. In less lucrative segments such as preclinical testing, animal experimentation and manufacturing, Chinese firms appear to be more prevalent while India is a more mature venue for chemistry and drug-discovery activities. Domestic Indian and Chinese firms rarely have the capital and the regulatory expertise to develop a drug beyond phase II clinical trials. Their commercial development of new intellectual property therefore necessitates relationships with major multinational corporations.

The study found that India is playing a more strategic role in early discovery and its drug companies have the most experience in selling generic drugs that meet FDA standards. Companies such as Ranbaxy, Aurigene, Advinus, Nicholas Piramal and Jubilant have negotiated long-term deals with Western pharmaceutical companies to discover and develop new chemical entities. In a growing number of cases, the Indian companies share the financial risk in discovery as well as the potential financial rewards. One Chinese company, Hutchison MediPharma, has formed a similar partnership with Eli Lilly. Others are likely to follow suit as Chinese contract research organizations gain experience and Western companies trust in China's ability to protect intellectual property, said the researchers.

India, Singapore IPR cooperation likely to be signed soon

Union Minister of Commerce and Industry Kamal Nath on Monday stated that a bilateral agreement on Intellectual Property Rights (IPR) cooperation between the intellectual property offices of India and Singapore will be signed shortly. During his bilateral meeting with Lim Hng Kiang, Minister for Trade and Industry of Singapore, Nath informed that as regards the Association of Southeast Asian Nations (ASEAN)-India FTA, considerable progress was made during the last meeting in Bali and added: "I am now hopeful that we would be able to achieve our target of announcing the conclusion of negotiations at the AEM-India consultations in August". During the interaction, Kamal Nath said that Singapore was India's fifth largest merchandise trading partner and fourth largest merchandise export market and added that India's exports to Singapore grew by 16 per cent in the year 2007-08 compared to a growth of 42 per cent in the imports from Singapore.

He further stated that Singapore ranks fourth in terms of foreign direct investment in India during the period 1991-2008 with investments of 4.7 billion dollars. The total bilateral trade during 2006-07 was 11.49 billion dollars and has increased by 25.88 per cent to 13.42 billion dollars in the year 2007-08 (upto February 2008) over the same period in 2006-07. Major items of Indian exports to Singapore were: petroleum (crude and products); other commodities; transport equipments; electronic goods and non-ferrous metals. Major items of Indian imports from Singapore were: electronic goods; petroleum (crude and products); organic chemicals; machinery (except electrical and electronic) and project goods.

The top five sectors attracting Foreign Direct Investment (FDI) inflows from Singapore are: petroleum and natural gas, mining, services sector, construction activities and power, whereas the top five sectors attracting technology transfer are: electrical equipments (including computer software and electronics), hotel and tourism, food processing industry, chemicals (other than fertilizer) and miscellaneous mechanical and engineering industries.

Infosys expands patent portfolio in the United States

Infosys Technologies has announced that it has been granted two patents by the United States Patent and Trademark Office (USPTO). These patents are in the area of holography and mobile communications. This is the first time that Infosys has bagged patents from the US Patent and Trademark Office work done by its Software Engineering and Technology Labs (SETLabs), a 500-people center comprising researchers, engineers and consultants.

The Lab, set up in 2000 with the aim of bolstering research practices, has filed over 100 patent applications in the last 18 months. The two patents have come at a time when the company is looking at non-linear growth model, breaking the link between revenue and employee growth.

Subu Goparaju, head of Software Engineering & Technology Labs (SETLabs), the research arm of Infosys said, "the patent titled 'displaying holographic three dimensional (3-D) images' describes the realization of actual 3-D communication using computer-generated holography to send/receive information and the associated optical elements required to make a lightweight handset.

Existing technologies use high resolution LCD to give the illusion of 3-D while actually displaying a 2-D image. Actual 3 dimensional imaging which includes a representation of depth information along with amplitude information is not being used in these cases. This patent addresses the issue of 3-D in mobile communication.

The patent titled "method and system for providing reliable and fast communications with mobile entities" proposes a mobile Internet Protocol-based solution to support generic mobility over heterogeneous networks.

There are a number of problems to be overcome to support generic mobility over heterogeneous networks today. This solution leverages a split-TCP type approach where the TCP connection between the communication entities is split at a suitable gateway.

The solution does not require any extension at the mobile host and provides improved performance even for mobility across heterogeneous networks due to an inherent ability to adapt to changing network characteristics. It supports communication between two mobile hosts or between a fixed and a mobile host, where mobile host(s) can roam over heterogeneous networks and also supports a layer 3 handoff.

Across Indian IT services companies, the $5.7-billion TCS has filed over 200 patent applications in the last five years. Says Avinash Vashishta, CEO, Tholons (an advisory firm), "India IT majors have been running a software factory and R&D is one area where they have to do a lot. The focus being services, barring a few small exceptions they have not been able to create a business around R&D — that is, develop IP products and market them." Now, to get to the higher billing tasks and delink revenue growth from manpower growth, a focus on R&D is a must. The top IT majors could show the way.

E-filing in India, a long way to go [IP in India]

The government’s ambitious project to encourage electronic filing of patent and trademark applications has received an embarrassingly poor response in its first year. Of the 35,000 patent applications filed last year, only 410 (1.17%) were filed online. Worse, only 0.24% or 242 of the one lakh trademark applications during 2007-08 were filed online.

The facility for filing of patent and trademark applications from anywhere in the world at any time through the Internet, was launched in July 2007 to help the Indian Patent and Trade Mark Offices function as paperless offices. Government officials termed the poor show as “teething troubles” and blamed it on ignorance and reluctance on the part of Companies and individuals to use the new system.

To correct the situation, the government had asked patent officers and the National Informatics Centre (NIC) to provide training to patent attorneys, through a programme conducted in the four metros. Consequently, in the two months of the current financial year, online applications for patents and trademarks have improved marginally. Online applications constituted 4.9% of the 6,000 patent applications filed so far in this financial year while it also constituted 1.34% of the 20,000 trademark applications.

Currently, there are only about a dozen countries that have e-filing facilities, with India recently becoming a member of this elite group which consists of countries like USA , Japan , South Korea, China and the European Patent Office. With patent applications from China outstripping those from India by leaps and bounds, the Centre has launched a national awareness, sensitisation and consultancy programme by roping in universities, laboratories, state level chambers of commerce and industry, patent attorneys and the scientific community.

The proactive campaign which involves an outlay of Rs 20 crore, would establish a correlation between intellectual property, innovation, productivity and competitiveness. The objective of the programme was to take the intellectual property regime to the bottom of the industrial pyramid and invigorate the proprietary rights culture in the country. An effective online filing system can prove to be the lynchpin for this strategy’s success.

The benefits of e-filing of patent and trademark applications include getting an application number immediately, on-line verification assuring error-free filing and obtaining the filing date, a speedy registration process, being able to save the date locally in the applicant’s personal computer, printing the completed application data and recalling the contact details for subsequent applications. This would have meant savings on paper, valuable time and money.

Payments can be made through the Payment Gateway of authorised bankers, which would save time and money and also put an end to the hassles involved in visiting and filing the applications in the offices. NIC has developed modules for e-filing and on-line processing with State Bank of India providing the payment gateway.

But patent lawyers said though the e-filing system is a major improvement over the previous one, it also hasits own limitations.

Incidentally, the government is working towards sending more officials to be trained by the World Intellectual Property Organisation, UNIDO, as well as Japanese and US patent offices. Several vacant posts of patent examinees also need to be filled up.

To enhance the prestige of the Indian Patent Office (IPO) and to attract work from abroad, the government is also in the process of transforming IPO into an International Search Authority and an International Preliminary Examining Authority under the Patent Cooperation Treaty. Currently, there are only 12 such authorities.

Besides, India would soon join the Madrid Protocol on Trade Marks. Madrid Protocol is a simple and cost-effective system for registration of International Trademarks. India’s membership of the Madrid Protocol will aid Indian Companies in registering their trademarks in other member countries of the Protocol through a single application.

FICCI advocates 'knowledge centres' [India]

Industry body Ficci today said knowledge and education centres should be set up in patent offices across the country to educate the public with the role of Intellectual Property in emerging economies. The centres could house exhibition areas, besides making available literature on Intellectual Property to create awareness about protection and enforcement of IP, according to a Ficci release.

Ficci and the Department of Industrial Policy and Promotion (DIPP) have constituted a Consultative Working Group to make the Indian Patent Office more responsive to industry. In recommendations made to DIPP, Ficci said users who file patent applications electronically should be incentivised by reducing their filing fee. Transactions of records across patent offices also need to be expedited, it said.

As a result of deliberations of the consultative group, a separate wing in Mumbai Patent Office has been set up for data analysis. The data include records on technical fields by year of filings, number of patents granted to a company in each sector, list of companies filing patents, pending applications and country-wise patents in force. The patent office has also made online the abstracts of patent applications as well as copies of patents granted and decisions of the controllers, enabling third parties to check legal status of the patent application, the chamber said.

India not to open legal services sector soon: Ministry of Commerce

The ongoing World Trade Organisation (WTO) talks will not lead to India opening up the legal services sector to foreign firms, Commerce Secretary Gopal Pillai said. However, he has made it clear that permitting foreign legal firms into India to deal with mergers and acquisitions (M&A) as well as arbitration cases will be beneficial. "The Indian legal services sector needs reforms that involve issues related to limited liability, number of partners and advertising restrictions. Once that is done, it has to be ready for liberalisation of the sector," Pillai said.

"In this round, we won't commit opening up of the legal services sector in the services negotiations of the Doha Round. But opening of the sector has great potential for the Indian professionals," Pillai said, adding that foreign lawyers would not come and practice in Indian district courts.

"They are interested in M&A and arbitration between companies." Currently, foreign law firms are not allowed to provide their services in India while professionals in the sector are not comfortable to liberalising the sector for foreign participation. The resistance by the Indian legal professionals for entry of foreign firms into India is because of a multitude of regulations.

For example, advocates in India are not allowed to advertise. More over, there are restrictions on the number of partners in a legal firm, which cannot cross 20. The Bar Council of India Rules prohibit Indian advocates from sharing remuneration with any person or legal practitioner who is not an advocate.

"We understand that there are limitations. But in the future most of them will be addressed. On issues of liberalisation, the commerce ministry will be guided by the law ministry as well as the Bar Council, with whom we are interacting. Surely, Indian law firms with just 20 partners will be at a disadvantage when a US firm with 2,000 partners set up base in India," added Pillai.

At present, there are nearly one million lawyers in India. The global legal services market has been estimated at $220 billion while India's share stands at $300 million.

Will 'Peter the Scot' harm Indian Geographical Indications? [India]

India can have its whisky, and drink it too, but it risks losing out in the global rice and tea market.
A ruling by the Supreme Court on Tuesday ended the almost two-decades-long challenge by an association of Scotch whisky makers to Khoday India Ltd’s right to have a non-Scotch whisky brand called Peter Scot because of the similarity between the words “Scot” and “Scotch”.
But the ruling could result in global retaliation and affect Indian products such as basmati rice and Assam tea, say analysts. That’s because the Supreme Court ruled in favour of Khoday despite the geographical indication (GI) status enjoyed by Scotch. Unlike a trademark—a unique and distinctive sign to identify a product or service—a GI is a sign used on goods that have a specific place of origin and possess qualities or reputation that are due to that origin.
In many cases, a GI is merely the name of the place where the goods originate. “Champagne” and “Tuscany” are some examples of GIs. Indian examples include “Assam tea”, “Darjeeling tea” and “Kanchipuram silk saree”. Basmati rice is also a GI.

In this case, Khoday, which began producing Peter Scot 40 years ago, registered the trademark in 1974. Twelve years later, the Scotch Whisky Association or SWA, a group of manufacturers and exporters of Scotch whisky, raised an objection before the registrar of trademarks, arguing that the word “Scot” was deceptively similar to “Scotch” and would mislead the consumers into believing that the product was of Scottish origin. The registrar ruled in SWA’s favour.
Khoday appealed to the Madras high court which too ruled against it. The high court order delivered in October was challenged by Khoday in the Supreme Court.
A two-judge bench on Tuesday allowed the appeal and validated the use of the trademark “Peter Scot”.
The judgement swung in favour of Khoday on two points. The first was the delay of 12 years on part of SWA in filing an objection.
The second was that consumers of Scotch whisky in India are discerning enough to distinguish between Scotch whisky and whisky made in India.
Referring to precedents from countries such as Australia and the US, the judges said the legal test applied to check deception of consumers by the high court were incorrect.
The judgement states: “However, tests laid down in Australia and United States in respect of self-same goods are noticed herein before are somewhat different. But then we are concerned with the class of buyer who is supposed to know the value of money, the quality and content of scotch whisky. They are supposed to be aware of the difference of the process of manufacture, the place of manufacture and their origin.”
The apex court’s judgement, interestingly, overturns numerous verdicts of high courts in the country that granted SWA relief by passing restraining orders against liquor manufacturers in India for using words such as “Scot”, “Highland” and “Chief”, words that SWA contended were associated with Scotch whisky brewed in Scotland.