Protecting IPR in Outer Space - A Legal and Technological challenge

The initial spirit of exploring outer space starting with the first space flight by Sputnik in October 1957 got metamorphosed into more extensive exploration of outer space and terrestrial bodies, research activities and sensing of commercial interests over years. The insatiable and unending human spirit to know the unknown and the advancement in science and technology have been the main drivers. Telecommunication and navigation have established an undisputed position in outer space for commercial and strategic interests and now space tourism, the utilizing materials of terrestrial bodies and collaborative research in space stations have added new dimensions.

All space activities whether exploratory or commercial, undertaken by nations and companies are presently governed by two international treaties namely, the Outer Space Treaty of 1967 and the Moon Treaty of 1979 which have their origin in the Cold War Period. The central theme was to allow and regulate peaceful use of outer space and terrestrial bodies without claiming any ownership of any resources, appropriation of any part of space and undertaking military or military like activities. The Moon Treaty has, in effect, forbidden states to conduct commercial mining on planets and asteroids until there is an international regime for such exploitation. Protection of IPR is not an element of these treaties as commercial activities were not visualized at that time.

Several countries including India, are studying promulgation of a legal framework to allow private entrepreneurs to undertake space activities as also how IPR could be protected in the outer space. The draft Space Activities Bill 2017 proposed by ISRO carries a section on IPR. USA provides for protection of inventions in outer space in 35 USC 105 enacted in 1998. USA has recently shared its vision in the Atlantic Council to overhaul these treaties for facilitating space activities for commercial purposes. It is expected that investments and other efforts towards undertaking commercial activities in outer space would grow in coming days.  If no IPR protection is provided, why would any company invest resources and time in undertaking any outer space  activity? If no company comes forward, space resources such as Helium 3 cannot be utilized for the benefit of human race.

Are patents being issued for inventions useful in exploring outer space and exploiting the same for satellite telecommunication and navigation? The answer is yes; one of the first few patents was issued in USA in 1961. Since then, few thousand patents have been granted (based on my searches). How many of these are enforceable in outer space is a million-dollar question? It is a complex subject involving orbit selection, orbital dynamics, satellite designs and their control in invisible physical space. Apparently, orbits themselves are not patented but systems incorporating technological solutions, special materials, electronics etc. for telecommunication are the subject matter of patents. The Molniya orbit originally designed by Russians is one such orbit used frequently by the aerospace community as this orbit maximizes the time satellites can spend over the northern hemisphere.

IPR concerning outer space would primarily be the outcome of research carried out on Earth and research conducted in outer space and on celestial bodies. The former is easy to handle as it is governed by the existing IPR laws in each country. Territoriality and sovereignty are at the centre of all existing IPR laws. There is no globally accepted definition of the starting point of outer space. However, many aerospace enthusiasts consider the Karman Line, which is 100 km above the sea level, as the beginning of outer space. The present jurisdiction of countries for civil aviation activities is only up to a few kilometres above the Earth. Outer space is thus beyond and outside the territory of any country, and any sort of appropriation is not legally possible and sustainable.  Hence, applicability of IPR laws practised on Earth to outer space is froth with legal and technological challenges.

The question of jurisdiction in outer space is not easy to answer. What could be the legal grounds for ascertaining jurisdiction, which transcends the boundaries of IPR laws?

Let us look at the following situation. Consider a company A which lands on moon, collects soil samples or some other material and then files a patent based on these raw materials in a country on Earth. Can a patent be granted under the existing international space laws / treaties? How would such IPR be enforced both in outer space and on the Earth? The first question would be why not? The second would be no and the third could be yes provided the patent immediately after grant, is placed in the public domain for its use by others without the risk of infringement. The third choice may perhaps, satisfy the broader goals of two treaties mentioned above.

There are plenty of questions and few are being raised here. Can inventions made and patented on Earth be used by others in space freely without the risk of infringement? How do you apply the criterion of inventiveness and non-obviousness in respect of inventions made in space? Non obviousness demands that the invention should not be obvious to a person skilled in the art. It would be difficult to find such a person as the environment of experiment in space may not be created on the Earth. Similarly, the requirement of enablement and adequate disclosure may be difficult to meet as it would require undue and expensive experiments to work an invention backwards.

One can carry out different types of scientific research in space, especially taking advantage of zero gravity or weightlessness as there is no human effort in creating the environment. Do the research results under this circumstance qualify for a patent? Whether the application of IP laws to outer space activities is a breach of the State’s obligations under the treaties? Many more questions other than the above need to be answered for expanding the commercial (and strategic) use of outer space and terrestrial bodies. Collaborative research in International Space Station may provide partial answers to some questions.

Infringement, of patents and other IPR granted on Earth, in outer space is a serious matter for companies to guard against. Can an amicable solution be found through novel licensing arrangements which are applicable in outer space?

IPR issues will start multiplying after a few years when commercial activities grow in numbers. One can sense emergence of litigations. Do we need an extension of the existing IPR laws to outer space or design a new legal framework for IPR protection in outer space? Should a common legal system be developed for IPR protection on Earth and outer space simultaneously? The world faces a grand challenge!!!    

 #outerspaceIPR  #spaceorbit #karmanline #molniyaorbit

© R Saha

Previous : Compulsory licensing of patents related to Covid 19 vaccine

Compulsory licensing of patents related to Covid 19 vaccine

Of late, there has been a big clamour about transfer of vaccine technology including compulsory licensing of the Indian vaccines, to other companies in India. One can see intense debates on TV channels, social media and even in courts on this topic. Some commentators, analysts, political parties and intellectuals are spending a lot of time in demanding that provision of compulsory licensing under the Indian Patent Act should invoked for technology transfer. The Supreme Court also raised a similar viewpoint in terms of invoking Section 92 and Section 100 of the Patent Act while discussing availability of vaccines in India. 

As per Section 84 of the Act, a compulsory license can be awarded only in respect of a granted patent and that too, three years after the grant of the patent, on a specific request by a company desirous of taking up the manufacturing of the granted patent. The company requesting for compulsory license will have to establish its strength and capability to manufacture the vaccine. If there is no such request, the Patent Office cannot, suo-motu, take up awarding a license. However, Section 92 which is a kind of extension of Section 84, empowers the government to issue a notification for compulsory license in respect of a patent and interested parties may apply for a compulsory license; other conditions remain the same. There are other conditions as well which will have to be satisfied. The government can invoke Section 100 in respect of a filed application or a granted patent by which it may use the invention for its purpose without going through the compulsory license route. 

Let us do a reality check on granted patents related to Covid-19 in India and examine the applicability of compulsory licensing. There are four major foreign companies, whose inventions have been converted into products in the form of vaccines, are manufacturing in large numbers now. These companies are Moderna, Johnson and Johnson, BioNTech and Oxford Innovation Centre. The BioNTech vaccine is being majorly produced by Pfizer and the Oxford one by Astra Zeneca. Moderna does not have any patents granted in India, in fact it has not filed any patent application so far. 

BioNTech, whose invention has been used by Pfizer, has filed 49 patents applications in India since 2010 and has been awarded only two patents. One patent is “RNA Vaccine” which was granted in 2017. It is not clear if this patent covers the mRNA vaccine or not. This may be a candidate for compulsory license during this year and beyond. However, its capability to combat Corona virus will need to be established by competent people. Similarly, J&J also does not have any granted patent in India. 

Oxford Innovation Centre which owns the invention for the vaccine being produced by Astra Zeneca and the Serum Institute, does not have a patent granted in India. In fact, it filed a patent application in February 2021. The Serum Institute is bound by its agreement with Astra Zeneca and perhaps, Oxford Innovation as well and may not be free to sub-license the technology. Covaxin is based on ICMR’s inventive work for which no patent application has been filed. As the basic technology (lab level) has come out of a government institution, it may not be necessary to invoke compulsory licensing or Section 100. 

For transferring this technology, it would be essential to assess transferee’s capability and manufacturing strength for producing the vaccine and its readiness to obtain regulatory approvals such as GMP. In addition, the transferee will have to have BSL 3 facility and pool of qualified and trained human resources. There is no application for compulsory licensing reported to be pending in this regard with the Indian Patent Office. We must also reckon at the same time, that a granted patent such as the one granted to BioNTech may not be sufficient to manufacture the vaccine as manufacturing will depend on many other essential inputs like patents, know-how, trade secret etc. Therefore, the whole debate about compulsory licensing is without substance and should be kept at bay. 

© R Saha

Next: Protecting IPR in Outer Space - A Legal and Technological challenge

Previous : IPR Waiver and Covid 19 vaccine

IPR Waiver and Covid 19 vaccine

It all started with India and South Africa submitting a proposal to WTO in October 2020 on IPR waiver in respect of Covid 19 vaccines. Interestingly, the proposal included waiver on patents, copyrights, designs and trade secrets associated with Covid vaccines. Initially, the proposal was not supported by the developed countries including EU, Japan, USA and UK which disagreed to even discuss the proposal. Some European parliamentarians did recommend to EU to support this proposal after a few months. 

Many other countries are now standing in support of this proposal. Most recently, USA decided to discuss this proposal in WTO. The US posture may be to gain a humanitarian image as it is not clear whether it will support the proposal or discuss it. It may be noted that many US companies are up-in arm against the current US stand and hence, the final US stand in WTO is debatable at this stage. The other countries EU, Japan and UK do not support the proposal even now. 

There is a weakness in the proposal that it is not practical to implement. Each country making use of the proposed waiver, especially developing countries, will find it difficult to manufacture vaccines without the active support of companies owning patents, trade secrets and know how. Patents in respect of all the vaccines in market are not yet granted anywhere and so was the case in October 2020. 

What waiver are we talking about? Perhaps, the thought may have been that the patents, whenever granted, should be waived so that any WTO member could use such patents for manufacturing the concerned vaccines without any risk of infringement. By the time WTO takes up this proposal for discussion, it is going to be few months from now. People familiar with WTO processes realize that any decision on a proposal may take some time, may be few months if all the members agree, as the decision making is through consensus and not through majority voting. We are already in May 2021, 7 months have elapsed since October 2020 and meaningful discussions on the proposal have not really taken place. The original proposal is likely to be modified before serious discussions start. Some indications are already visible. Each government has to further ratify the decision of the WTO to be inline with the local laws. This means more time for starting manufacturing vaccines. 

Technology experts know that a single or even few patents cannot lead to successful manufacturing unless other associated elements are in place. These elements are know-how, trade secrets, raw materials, manufacturing infrastructure, human resources, robust supply chain for raw materials and components like vials etc. Here is a big catch which WTO may not be able to address because most of these essentialities are not within the purview of WTO. 

The codified IPR like patents are in public domain and can be accessed by anyone for information. Such IPRs may be easier to handle through an amendment in TRIPS but it will be difficult, may be impossible, to regulate know-how and trade secrets because these are not in public domain and not accessible to public. Unless the companies holding know how, trade secrets and patents agree to license know how and trade secrets, there is no way for anyone to manufacture vaccines in a short time of few months or years just by obtaining the right to use such patents. Further, there are only a few vaccine manufacturing units in the world, especially in developing countries, hence rightly qualified human resources would be in short supply which are essential for ensuring quality of vaccine. 

In addition to approvals by the drug regulator, certificates for Good Clinical Practice (GCP) and Good Manufacturing Practice (GMP) would be required. Therefore, process of obtaining such approvals would be time consuming. The most practical approach on the global front would be to encourage licensing of IPR and total technology from the owners of IPR on terms and conditions which may be applied uniformly across countries. This may be easier said than done because details of licensing agreements would depend on local laws concerning licensing and negotiations between parties. 

Private companies will need to be compensated by somebody. The licensing agreements should include transfer of know-how, licensing of patents copyrights and trade secrets, convenient place for jurisdiction, supply chain etc. One can think in terms of uniform royalty rates and down payments which may be kept as low as possible low. Consideration, cooperation and collaboration (3C) would be essential for a way forward.

  

© R Saha

Next : Compulsory licensing of patents related to Covid 19 vaccine

Previous : The Indian patent law nurtures and promotes innovation

The Indian patent law nurtures and promotes innovation

The evolution of patent system in India is not a natural choice of independent India unlike the drive towards investing in research and development, import substitution, indigenous development of know-how and adaptation of technology. India has had its patent law since 1856 and continues to have it after independence with due amendments from time to time. Inventions are not necessarily dependent on existence of a patent law, although the patent law is certainly a big contributing factor in promoting inventions which can lead to innovations.

Innovations are inventions plus, and generally understood to be in terms of products or processes which are successful in the market or have the potential to be successful. An invention needs to be followed by many more steps such as scale up, prototyping, testing, characterization, and safety studies to meet regulatory requirements and standards etc. These steps have to be followed by effective manufacturing and marketing to remain competitive.

The Indian patent law is compatible with TRIPS and takes care of essential features of an invention namely novelty, inventiveness and utility. In its philosophy and character, it is no different from patent laws of other countries. The growth in patent filing by Indian residents in the post WTO period is testimony to the fact that inventive activities have grown primarily due to larger awareness and better understanding of ever increasing competition. A study by the author reveals that 16% of MSME drug companies have been filing patent applications in the last ten years.

The Indian law is very sensitive to the inventiveness aspect and therefore has stipulated that some inventions are not patentable in India. The laws of many countries do not spell out such exclusions but do attach importance to inventiveness or non-obviousness. For example, rearrangement of known devices or components not leading to a new effect is not patentable in India. The same concept was followed by the US Supreme Court in deciding the KSR v Teleflex case.

It must be remembered that the patent law has a strong element of public policy as it gives exclusive and monopolistic rights to an individual or a company for exploiting inventions while denying / limiting the remaining population the right to use and practise the invention.

The Section 3(d), perhaps more commonly applied to drugs as it talks of efficacy, is an example of ensuring inventiveness in inventions dealing with drugs and chemicals, and balancing with public policy is achieved in most cases. The law has however, not provided any direction towards interpretation of efficacy and left it to competent authorities like the Patent Office, Intellectual Property Appellate Board and courts. This needs to be looked into as efficacy is linked with scientific and technical aspects and a common rule may not applicable to all cases.

The provisions of compulsory licensing and working of patents are meant to avoid misuse of patents by the patent holder in specific situations. These provisions are, prima facie, not anti- inventions or anti-innovation. A company aspiring to get a patent in India should take into consideration these aspects, because they may affect its business prospects in very specific cases. However, a high degree of judiciousness based on reliable data and analysis of social and market aspects  is called for while arriving at the decision of awarding compulsory license. 

           

The process of patent granting in India takes a little longer and that has been a cause of concern for inventors and companies, especially MSME. Whether the law should stipulate stricter timelines is a matter for consideration by the competent authority. This is an operational aspect and does not in any way affect the intrinsic character of the law. Like any other patent law, the Indian patent law promotes and nurtures inventions; there is no evidence to conclude otherwise. If the level of inventive activities which the patent system protects, has not grown in the manner expected by us, the answers may lie elsewhere.

(This article appeared in Express Pharma, November 1-15, 2012 under the title "Law has a strong element of public policy")

© R Saha

Next : IPR Waiver and Covid 19 vaccine

Previous : Challenges faced by the Indian IPR System

Challenges faced by the Indian IPR System

The modern IPR system in India, in the real sense, is a post-WTO phenomenon which has many new dimensions such as protection of IC layout design, geographical indications, and new plant varieties which were not part of the earlier Indian system. Earlier there were only four forms of IPR prevalent in India namely, patents, copyrights, trademarks, and registered design. It would be safe to state that most contested disputes in the country fell in the categories of copyrights and trademarks. The Indian patent laws were comparable to those of many countries except that product patents in the area of drugs, chemicals, and food items were excluded from patentability. Now, however, the laws are fully TRIPS-compatible and also allow product patents in all areas of technology. However, there are some provisions in the law, mandated by the social and political thought process, which do not allow certain types of invention to be patentable. Patents were not used as a competitive tool in the pre-WTO days because we had a centralized economy with very little competition. Globalization and opening up of the economy have increased competition and it will continue to rise at a rate not witnessed in the past. Obviously, each cubic centimeter of space in the world of trade will be strongly contested by many players. IPR will play a very important role in the competitive world and it would be in the interest of every one that there is a legal framework which is sensitive to the social, cultural, and political needs of the country but still provides enough incentives for innovators and the process of innovation.

What we see today in terms of increasing IP issues was anticipated by many when it was decided to modify our IPR laws. It may be difficult to go back to the old system. Property always causes conflicts and disputes. This has now started happening in India in the IPR area as well and can be considered normal. When brothers can fight with each other on property matters, fight between two companies on IPR matters should not be a cause of disturbance and alarm. What perhaps would be required in disposing such disputes is judicial maturity, understanding of technological issues, and a balanced interpretation of patentable inventions to meet social goals. One will have to depend on the case laws within our country for developing a robust system for resolving IPR disputes. Indian courts had, for example, earlier disallowed the use of word ‘scotch’ for Indian whiskies. Yet, in another case, the Supreme Court has recently allowed the use of the word in respect of Peter Scotch.

The IP system of a country is now heavily influenced and governed by the IP systems of other countries, especially the developed ones. Patent practices in respect of biotechnological inventions were revolutionized in 1980 in USA; many similar events have been occurring since then. We must learn to develop a foresight to anticipate what is likely to happen. For example, inventiveness or nonobviousness of inventions will occupy the attention of many law- making authorities, international agencies, and judiciary. Indian inventors and their employers (if applicable) will have to pay serious attention to this aspect if they wish to have a right which can be defended in a court of law. The success will depend on critical scientific enquiry of each invention. Similarly, novelty determination is very crucial in light of expensive litigation and risk of losing market position. Therefore, awareness and training continue to be important elements for tilting the IPR system to our advantage.

New challenges are likely to emerge with the introduction of a system for protecting the new plant variety. One of the most important ones would be to register farmers’ varieties because no nationwide system is in place to undertake this massive task. It may be reckoned that one will have to take farmers in confidence and educate them about the new laws which are farmer-friendly. There should be systems to identify such varieties, generate adequate scientific data to establish their reproducibility, stability, and the unique traits before going in for registration. This may become handy to address food security problems in the rainy days. Geographical indications are becoming popular. As the social and political ramifications could be serious in some cases where more than one state could be the interested parties, it would be a good idea to have government intervention right at the beginning.

One of the important principles to be adopted for ensuring that wrongs are not done is to examine whether unfair trade practices are being encouraged by the use of IPR. There are many dimensions to this aspect including transaction of IP. The Competition Commission of India has brought out some guidelines to avoid unfair trade practices which are quite similar to what are being followed elsewhere in the world. It may be reckoned that TRIPS also endorses that unfair trade practices in IP-related contracts should be avoided.

Open source system for collating and utilizing innovations is in the nascent stage and is yet to generate enough evidence for its candidature as an effective tool for generation and sharing of IPR. It may perhaps make an impact if suitable models for benefit sharing is evolved which could provide enough remuneration to inventors. In the present form, it seems to lack equitable sharing of IPR. Perhaps patent pooling in the specific areas regulated by standards may be a better candidate to be pursued provided a proper legal framework is worked out.

There are many issues which need to be studied and researched in the Indian context to work towards a balanced practical state for our IPR system. In the absence of data, it is not possible to establish the advantage or disadvantage of the existing system. The research should be interdisciplinary in nature involving laws, science, engineering, business, economics, commerce, and social sciences.

(This article written by R Saha when he was Scientist/Advisor, Department of Science & Technology, Government of India, appeared in VIKALPA • VOLUME 33 • NO 2 • APRIL – JUNE 2008  EMERGING IPR CONSCIOUSNESS IN INDIA)  (Note: The views expressed above are that of the author.) .
Read the orignal article at

http://www.sristi.org/anilg/papers/Emerging_IPR_Consciousness_vikalpa.pdf

© R Saha

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Previous : IP Management in publicly funded research in India

IP Management in publicly funded research in India

The growing trend of international and ‘unconventional’ research collaborations means that the IP world has to navigate new territories constantly. Here Raghvendralal Saha outlines the Indian experience and response to IP-related issues in recent years.

 Publicly-funded research in most countries is conducted through governments’ own departments or ministries or through autonomous R&D institutions and universities. In India, almost 80% of expenditure on R&D is incurred by the Government which, therefore, has an immediate interest in publicly-funded research and its outcomes. Government departments, such as the Indian Space Research Organization, in most cases own all the rights in respect of intellectual property (IP) generated by their scientists and the scientists (inventors) do not get any share of revenue accrued from the licensing of IP. However, such departments also fund universities and other R&D institutions to carry out research and the rights of IP in these cases will largely belong to the Government. There are other government departments, such as the Department of Science and Technology, which provide funds for extramural research to universities and other publicly funded R&D institutions.

A large number of research laboratories and centres supported by the Government have a great deal of functional and financial autonomy. Examples of such autonomous bodies are the laboratories of the Council of Scientific and Industrial Research, the Indian Council of Agricultural Research and the Indian Council of Medical Research. These laboratories are engaged in intramural, extramural and contract research. As commonly practiced elsewhere, IP rights in contract research belong to the contracting agency unless there is an agreement for the sharing of rights. Extramural funding largely comes from government departments such as the Department of Science and Technology. These agencies have elaborate IP policies and their own IP offices or cells which take up protection and management of IP generated in their laboratories. In some cases the technology transfer function lies with another group within the organisation. These agencies do not automatically claim ownership of IP rights in extramurally-funded projects as it depends on the terms and conditions stipulated by the funding agency. Sometimes these agencies also fund projects in universities and R&D laboratories and in such cases they tend to retain the ownership rights.

First policy breakthrough

The Ministry of Science and Technology issued guidelines, Instructions for Technology Transfer and Intellectual Property Rights, in March 2000 to help enhance innovations by scientists, research institutions and universities. The salient features of the guidelines, which are applicable to projects funded by the Ministry of Science and Technology, are:

1.       Institutions may retain the ownership of any IP generated.

2.       Institutions shall take necessary steps to commercially exploit patents on exclusive or non-exclusive bases.

3.       The owner institution is permitted to retain the benefits and earnings generated out of the IPR. The inventor(s)’s share shall be limited to one third of the actual earnings.

4.       IPR generated through joint research by institution(s) and industrial concern(s) can be owned jointly by them or as may be mutually agreed by them through a written agreement. The institution and industrial concern may transfer the technology to a third party for commercialisation on exclusive/non-exclusive bases. The third party, exclusively licensed to market the innovation in India, must manufacture the product in India.

5.       Institutions shall set apart not less than 25% of the revenue generated from IPR to create a Patent Facilitating Fund for the management of IPR.

6.       The Government shall have a royalty-free license for the use of the IP for the purposes of the Government of India.

Science and Technology Policy 2003

The Science and Technology Policy of India released in 2003 is upbeat on intellectual property rights and related issues. It focuses a great deal on the transformation of new ideas into commercial successes. It states that the development of skills and competence to manage IPR and to leverage its influence will be given a major thrust. This area calls for significant technological insights and legal expertise and will be handled with high priority. Efforts will be made to create synergy between industry and scientific research by creating Autonomous Tech nology Transfer Organizations as associate organisations of universities and national laboratories to facilitate the transfer of the knowhow generated to industry.

Support to universities for IP protection

All educational institutions, including universities, colleges and schools, can approach the Patent Facilitating Centre (PFC – set up by the Department of Science and Technology) for full technical, legal and financial support in protecting and managing their IPR. Often, the requests from universities are routed through one of the 20 Patent Information Centres created by the PFC in different states. Universities retain all the rights to such patents as the PFC’s support is available only if universities own the rights. The PFC does not have any claim in such patents. It has so far filed more than 350 patent applications in India and other countries from around 60 universities/academic institutions, and many of them have been granted. It may be noted that, without such financial, legal and tech nical support, many universities and academic institutions would not come forward to protect their inventive work. This model is quite different from that practiced in other countries, where universities have to find their own funds, mostly generated through licensing. Indian universities will take some time to reach that level. The PFC has been working consistently in the last 12 years to create awareness and build capacity through different methods. It has organised nearly 325 IPR awareness workshops all over the country, both independently and also in association with many government ministries and departments, and industry associations.

The experience of Indian universities

Until 1995, the culture of universities and academic institutions protecting their inventive work through patents was almost nonexistent. However, efforts made by multiple agencies in the country have made a difference. The total number of Indian filings by Indian academic institutions was only 35 in 1995, but this number grew to 169 in 2004. The growth is substantial, although the absolute number is still low.

The need for technology transfer offices

The gap between invention and commercialisation has been addressed in many universities by setting up technology transfer offices (TTOs) which undertake activities such as managing the IP of universities, licensing IP, and managing research contracts. Managing TTOs is a new challenge as it requires a good mix of legal and technical skills which are often difficult to locate. In a country like India, where the culture of protecting innovations through legal instruments is relatively new, the task of starting TTOs can be problematic. University faculties are generally not keen to manage such offices as they do not see any academic growth. Also, one is not always able to find the right people from outside as such people are in short supply. However, in the past decade or so, some leading academic institutions in India have set up off ices similar to TTOs which are slowly coming of age and looking after the management of IP and technology transfer. Traditionally, such institutions have been maintaining offices which look after all R&D projects funded by the Government and other agencies. Some people may feel that both functions should be performed under one roof. However, it is not essential to have a ‘one roof’ concept but, if these functions can be coordinated, the end result will be good. The other problem often faced by such offices is the shortage of financial res ources to protect inventions in India and else where. Each institution has to maintain a balance between resources and the demand of its faculty to protect its inventive work. People are not always able to differentiate between a paper being published in a journal and a patentable invention, and therefore the demand for protection may be proportional to the number of papers published or accepted for publication. For example, the Indian Institutes of Technology (IIT) at Bombay, Delhi, Kharagpur and Roorkee and the Indian Institute of Science have brought out their own IP policies, which they practice. The main feature of the policies is that these institutions will have the right to own inventions and other IP generated in their institutions through their research activities. A new culture is slowly taking root in terms of encouraging academicians to participate in form ing start-up companies and setting up technology incubation centres.

International R&D

Publicly-funded research and academic institutions are experiencing a new situation where sharing and managing IP with similar institutions and industries in other countries is a crucial element. Such agreements are usually decided at country-level and have to take several public issues into consideration. IP licensing and technology transfer are complex tasks and the complexities increase several-fold when the stakeholders (in terms of IP generation, licensing and maintenance) belong to different sovereign countries and legal jurisdictions.

Bilateral agreements have to address many complex issues, from the definition of IP and associated rights to satisfying the public need that exists in each sovereign country. Therefore, there is an urgent need to address international collaborative research and development while discussing IP licensing and technology transfer from publicly-funded institutions. The issues demanding attention are many, and include:

● absence of parity between the IPR laws and other laws related to technology transfer and taxation of stakeholders

● difficulty in the definition of foreground and background inventions or IP especially by the scientific community

● sharing of IP in different countries

● sharing of revenue and ownership of IPR in the case of joint research by publicly-funded institutions and industries

● maintenance of confidentiality of research activities and findings

● selection of jurisdiction for resolving disputes

Perhaps there is a requirement to evolve a robust system internationally which is driven more by the wish to enhance collaborative research opportunities rather than by pure commercial considerations. Ownership issues in university-industry collaborations may take a complex shape as industries generally do not want to share IP rights with government; however, the universities they work with will receive much of their funding from their respective governments in the foreseeable future. R

(Views expressed in this article are purely those of the author and do not represent the views of the organisation with which he was affiliated.)

Raghvendralal Saha was Director of the Patent Facilitating Centre, Technology Information Forecasting and Assessment Council at the Department of Science and Technology, India.

(This article appeared in Research Global, the Magazine of the Global Research Management Network) October 2007, Issue 17). The orignal article can be read at http://www.globalrmn.org/documents/researchglobal17october2007.pdf.
© R Saha

Next : Challenges faced by the Indian IPR System

Previous : Intellectual Property Rights and Internet

Intellectual Property Rights and Internet

This article describes the relationship between Intellectual Property Rights and Internet operations, including e-commerce. The new issues opened due to the advent of digital technologies for storing and transmitting information are discussed along with types of IPR issues applicable to Internet.

1. INTRODUCTION

A spurt in the interest in intellectual property rights (IPRs) has been visible in the country for the last five years, even though the legal and other regimes to deal with IPR have been in place since independence and earlier. The recent interest, which started with curiosity and sometimes with an element of apprehension, has now graduated to a need-based compulsion and desire to play a new game introduced with the formation of World Trade Organisation (WTO). With the opening up of trade in goods and services, the IPRs have become more susceptible to infringement without adequate return to the creator of knowledge. There has been a quantum jump in the R&D costs with an associated jump in investments required for putting a new technology in the marketplace. The stakes of the developers of technology have become very high and hence, the need to protect the knowledge from unlawful use has become expedient, at least for a period, that would ensure recovery of R&D and other associated costs and adequate profits for continuous investments in R&D.

Information technology (IT) requires a strong IPR protection system for many reasons; the important ones are:

(a) It changes rapidly,
(b) Product life cycle is becoming shorter,
(c) Investments on R&D, production and marketing are very high,
(d) It is a multidisciplinary area requiring high level of skills,
(e) It is unaffected by geographical boundaries,
(f) It is a great equaliser and unifying factor for the human society,
(g) It is now highly software driven, and
(h) The industry is very competitive.

Therefore, one expects a large number of patents being granted in the IT sector all over the world, including India. In a recent study conducted by the Patent Facilitating Centre (PFC) of the Technology Information Forecasting and Assessment Council (TIFAC), it was found that electronics is the second most important area after chemicals, in which a large number of patent applications are being filed in India. Of the 2678 applications considered, most applications were related to areas such as: encoding and decoding (1 14), optical fibre (97), cellular telephony (78)) antennas (63), data transfer (45)) CDMA (38), TDMA (19)) display devices (96), chips (48), computer network (23), and Internet and e-commerce (23). The bulk of these applications (95 per cent) have been filed by foreign companies and individuals, indicating their strong interest in India. Many applications appear to be linked to software and databases that are not patentable in India. These applications need to be tracked. Similarly, applications related to Internet and e-commerce may also be tracked.

Internet has introduced many new features in sharing of information and knowledge and there is a general feeling that some special protection regimes may be called for. The matter is being discussed globally by international organisations like World Intellectual Property Organisation (WIPO) and WTO. So far no recommendations have emerged, which could be considered acceptable to all. However, there is one common understanding that new rights of intellectual property should be avoided and no greater protection to intellectual property need be provided in the cyber space than that exists elsewhere.

2. INTELLECTUAL PROPERTY RIGHTS

Intellectual property rights as a collective term includes several independent intellectual property rights (IP), namely, patents, copyrights, trademarks, registered (industrial) design, protection of IC layout design, geographical indications and protection of undisclosed information.

The IPRs are awarded by the member country and most of the rights are territorial in nature, except for copyright. A copyright generated in a member country of the Berne Convention is automatically protected in all the member countries, without any need for registration. However, the rights will not be automatically available in countries that are not members of Berne Convention. Like any other property, IPR can be transferred, sold or gifted. One of the main underlying principles of IPR is that protection is not given for what is already known in the public domain. The IPRs are meant to benefit creators of work, inventions and designs. These rights are granted for a limited period, except for trademark where the protection period could be extended indefinitely by way of renewal. IPRs, which are the monopoly rights, prohibit unauthorised use of protected work/invention. In return for such rights, the state expects that the invention/ original work should be made public 'for use by others, after the period of rights has expired, or during the period of protection with proper authorisation from the right holder. However, while protecting undisclosed information, the above principle of disclosure will not apply.

A patent is awarded for an invention which satisfies the criteria of global novelty, non-obviousness and industrial application. Patents can be granted for products and processes. As per the Indian Patent Act 1970, electronic equipment, circuits, etc. can be patented and currently their term of patent is 14 years from the date of filing. It is expected that this term will be extended to 20 years after the amendments to the Act take place.

India is a signatory to the Berne Convention and has a very good copyright legislation, comparable to that of any country. Copyright is awarded to literary, dramatic, audio-visual and similar works. Computer programs and databases are also considered literary works and hence, are protected by copyright in India. In fact, these are considered copyrightable items under the Agreement on Trade Related aspects of Intellectual Property Rights (TRIPS). It may be noted that copyright protection extends to expression of an idea and not to the idea itself. To get protection, these works should be in a tangible form, i.e., in a form capable of either visually or audibly recreating the representation of the original work. Works are not copyrightable if they are merely ideas or sounds or gestures. Therefore, any information transmitted on Internet is a subject matter of copyright.

A trademark is any word, name, symbol, or device or any combination thereof, used by a person to distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of goods. The purpose is to protect the public so that it will get the product with certain qualities if it goes for a product having a particular trademark. Industrial design is connected with the protection of external shape, appearance and configuration of an article. Protection of integrated circuit (IC) layout design is associated with the mark design in (ICs). At present, there is no law in the country for providing this protection but such law is expected to be available by January 2000, as stipulated in TRIPS. Protection of undisclosed information is quite similar to the concept of trade secret, which includes formula, pattern, compilation, programme, device, method, technique or process. The new legislation is expected to be in force in India by Jan 1, 2000.

3. NEW ISSUES OPENED BY DIGITAL TECHNOLOGY

The move from analog to digital technologies for storing and transmitting information is a major shift in IT. New paradigms of economics and law, including the IP laws will have to be evolved to solve new problems not experienced so far. IP laws have, in the past, responded to new developments in science and technology, but with a time lag. For example, copyright was evolved as a response to the development of printing press. In the 17^th century, the right to copy was equivalent to a right to vend because it was cheaper to buy an authorised original of the work than to copy it. Basic concepts of copyright protection must shift as the relative costs of events affecting the creator's market position change. Internet has posed many questions related to copyrights, trademark and patents; countries are even thinking of evolving new protection regime to protect commercial interests through protection of creators' works.

The growing power and ever diminishing costs of computers in the last 50 years have brought about some important convergence among technologies through which information has been produced and distributed. Office automation, especially word processing, computerisation of newspaper publishing and the availability of low-cost open architecture .computer networks have been responsible for moving away from purely paper and ink-based technologies. The PC revolution and access to digital communications have made it attractive to disseminate information electronically. Much of the information produced and distributed through broadcast and television, radio and telephone conversations were analog in nature. As a result, it was difficult to transmit different categories of information through a common channel. With improvements in the digital technologies, it became feasible to conceive of the voice and video content of television, radio and telephone being digitised, produced and distributed through digital networks that no longer will be distinct from the networks used for text-based information. The different categories of information have distinct positions in the law but with this erosion of the boundaries between categories, a new challenge for evolving an appropriate law has become imminent. Further, the information can be replicated with a very high speed and each copy is as good as the original. Digital representation also allows random access to parts of a document or message rather that requiring review of an entire new record, from the beginning to the end.

Some basic issues influencing the application of existing IPRs in the internet environment have emerged and call for a shift in the conceptual framework, operational and execution strategies and legal premises. Firstly, a truly intangible and an ephemeral property in cyber space is being dealt, which does not exist at any particular location as one understands, but seems to float in space. All IPRs are territorially limited, in the sense that the laws of the country, where the alleged infringement is supposed to have taken place, will decide whether an infringement has actually taken place or not.

The traditional notion of infringement needs to be re-appraised as it may sometimes be difficult to locate the infringer, and sometimes, the place of infringement may not have proper IPR laws, particularly copyright laws. People involved with IPRs, like authors will have to review their position, especially in the light of the potential for exploitation, and adopt new market and investment strategies. It is likely that novel methods will be developed by investing large sums of money to stop unauthorised use of copyrighted material along with other systems, using high technologies. This may limit the total number of service providers on Internet and these players will then dictate the future use of Internet. This may not allow open trading in IP. Further, the technological convergence puts pressure on traditional institutional arrangements for selling things, collecting money, and preventing piracy. Basic legal concepts need to be developed.

There has been a rapid growth of Internet; the number of users has grown from about 1 million in 1990 to more than 70 million in 1997. The e-commerce grew from US$ 2.6 billion in 1996 to US$ 20 billion in 1998. This figure is expected to run to hundreds of billions of dollars in the early years of the next millennium. As the number of users increases, the chances of infringement of copyrighted material also goes up. The IP framework acknowledges that some free riding is inevitable in any publishing activity; the important question about protecting IP is whether large-scale piracy could be reduced to almost zero level. India's stakes in the entertainment market are quite high and there is a need for a close-to-airtight mechanism for protecting the rights of creators, and therefore, there is an urgent need to have a close look at transacting Indian music and pictures, etc. over the Internet.

4. TYPES OF IPR APPLICABLE TO INTERNET

Generally speaking, the enforcement aspects rather than the protection aspects of IPR are occupying people's minds and the people are, perhaps, more concerned about the non-IPR issues, such as levying duty on accessing information on Internet and doing e-commerce through the Internet. While dealing with IPR the Internet, one is predominantly concerned with copyrights: trademarks, patents, registered design and protection of IC layout design and undisclosed information. Each of the rights mentioned above provide a different kind and degree of protection. The strictest regime is the one provided by patents.

5. COPYRIGHT

Protection of copyright appears to be the most obvious and important subject matter. Once a material is published anywhere in member countries of the Berne Convention, it becomes copyrighted material and no separate registration is required. Therefore, any information which is transmitted on Internet is a subject matter of copyright, as it is available in public domain. In addition, many pieces of information transferred and transmitted on Internet may already be copyrighted. There are several players whenever one is dealing with transaction of information on Internet, namely, the internet service provider, the content provider, the person downloading the information, bulletin board service provider, etc. The cause of infringement may be any of the players. The situation becomes very complex when a collection of copyrighted work is transacted. Take, for example, the case of multimedia which represents an integrated whole of computer program, audio-visual work, text, sound recording and databases. These components may be separately protected through copyrights or some other regime. The question, which arises, independent of the Internet is: who is the owner of such a work and what exactly needs to be protected? As different components are protected, it may be felt that it may not be necessary to protect the multimedia work per se. But, this approach may not be conducive to new investments for reaching the benefits of the digital revolution to a large population.

A deeper analysis would show that a multimedia work is neither a literary, musical or dramatic work nor it is a database or a computer program. However, the potential of multimedia works is immense and is' proving to be large revenue generators. Therefore, it appears that a standalone legal regime may be considered by the publishers and pushed into international debates. The main question arises as to who would be responsible for wrong and unauthorised use of such information. Secondly, it is also equally important to ensure that Internet does not promote and encourage unlawful use of any copyrighted material.

There are many court cases dealing with infringement of the nature mentioned above. Playboy Enterprise claimed in 1993 that 170 centrefold photographs and other photographs from its publications appeared on the bulletin-board service (BBS) run by Mr Frena for which he did not have any authorisation from Playboy Enterprises. The District court held that Mr Frena was an infringer. Similarly, in another case, the court granted a restraining order against the uploading and downloading of copyrighted computer software of Sega Entertainment, permitted by a BBS operator. The court also upheld the seizure of the computer memory devices, which had been distributed by BBS operator. At the Diplomatic Conference of WlPO held on December 20, 1996, two new obligations have been introduced on a treaty on copyrights.

The obligations concerning technological measures demand that each contracting state shall provide adequate legal protection and effective legal remedies against the circumvention of effective technological measures that are used by authors in connection with the exercise of their rights under this treaty or Berne Convention and that restrict acts, in respect of their works which are not authorised by the authors concerned or permitted by law. This, in other words, means that the use of decryption devices without the consent of the authors will not be allowed. It may therefore lead to a situation that a user may have to purchase a decryption system recommended by the authors or their assignees.

Many developed and member countries are also allowing patenting of these items. Copyrights are often thought of as special territory for artists, composers, writers, and those connected with the entertainment industry. People in these activities have long been aware of the special value of copyright protection. What is not well-understood is that copyrights are at least as valuable to the commercial world, as to government operations and fields of science and education.

6. DOMAIN NAMES AND TRADEMARK ISSUES

The estimated number of domain name registration has increased from 100000 in 1995 to 5 million and is growing at a volume of 70000 new registration, every week. The domain name is that part of the e-mail address or the home page address which appears after '@' and 'www', respectively. Domain names are read from right to left. The first level on the right, such as '.com' or 'co.uk' is known as the top level domain (TLD). The part immediately to the left of TLD is known as the second level domain (SLD). It is the SLD which is allotted to users as the unique identifying element in their Internet address and this usually corresponds to the user's trading name. It is clear that the Internet is an effective tool for marketing internationally and creating more and more business opportunities. Potential markets are not limited by geographical boundaries.

For this new communication medium, the goods or services offered are not available for instant physical identification, as are goods in a store. Instead, these goods or services must be located and accessed by a domain name. It is at this point that an issue related to trademark arises. The concern is that an Internet address assigned to A would contain words constituting B's trademark. If A is an entirely different business from B, there may not be any trademark infringement problem because there is no possibility of consumer being confused. The problem arises when A is in the same business. It is known that many corporate giants did not appreciate the hidden potential of domain names in the early days and others used their trademarks as domain names. It has been reported that TATA is being used as a domain name by someone other than TATA Sons. There are reported cases where these corporate houses have bought domain names at a price. Now, many industries are reserving domain names of their interest. For example, it is reported that 1, Craft Foods Inc. has registered 150 domain names relating to its product line.

Similarly, Proctor and Gamble has reportedly obtained domain names corresponding to trademarks for its products and has taken additional steps of registering domain names associated with the use of its products, such as ‘underarm.com’ and ‘diarrhea.com’.

A domain name is not a legal right as such unlike patents, trademarks and copyright, there is no domain name law. It is becoming a valuable piece of IP in cyber space. It is quite 17 evident that law suits involving trademarks will emerge. It may be a difficult choice to determine who the real infringer is, the owner of the domain name or the NIS or the service-provider. New guidelines have been worked out which put heavy responsibilities on the person applying for a domain name so much so that he/she has to almost certify that the proposed domain name does not infringe any trade name, company name or any other IPR. Many developing countries are not members of treaties related to trademarks. Due to the international nature of Internet, this will lead to many legal cases, as many applicants will have very difficulty in accessing the trademarks and trade names already registered in other countries. This development makes the allotment of domain name dependent on a global search. Further, consideration may be given to changing format of the domain name to avoid the trademark issues. No clear-cut guidelines exist to decide the cases related to domain and trade names. However, it seems from a number of judgements in the US that the trademark laws can be used to settle IPR issues related to domain names vs trademarks /trade names.

7. PATENTS & OTHER RIGHTS

Patents seem to have occupied a secondary place while discussing the IPR related issues regarding Internet. In view of the transcontinental nature of the Internet operations, it would be better to minimise infringements by providing better protection mechanisms through better technologies for encryption and decryption. In the context of e-commerce, these technologies play a very important role as they provide the best solution for avoiding unlawful access to what is being transacted on the Internet between two or more parties. This secrecy could only be maintained by assigning special keys (codes) to the players of e-commerce (EC) having unique identification.

The concept of digital signature is based on these technologies. The development of digital technology has permitted huge expansion in the capacity for encrypted services. However, at the same time, the sale of unauthorised decoding devices has had an adverse effect on the operators of encrypted services. EC has 18 estimated that unauthorised decoding devices currently represent between 5 and 20 per cent of the total number of devices in circulation. This would promote some Internet service-providers and database operators to monopolise such devices and make the users dependent on the operators for many other facilities, which the users themselves can arrange.

As the sophistication of technologies goes up with the passage of, time, developing countries may face a difficult time, especially in terms of hardware. The issue becomes complex due to the fact that such devices are eligible for patents. Software, encryption and decryption systems including equipment, assemblies, ICs, components or software with capability to maintain secrecy, compression algorithms, techniques for representing graphical images, databases and databases retrieval techniques have become subject matter of patents in developing countries. For example, US patent number 4,405,829 (September 1983) deals with the RSA encryption, 5,396,343 (March 1995) with image compression systems with optimised data access, 5,428,741 (June 1995) with high speed image pre-processing system including a multipurpose buffer for storing digital image and 5,428,462 (June 1995) with facsimile apparatus having user name register with means for receiving image signals. Whereas in India, software is not patentable per se as these are considered literary works; in advanced countries it is now possible to obtain software patents.

There are two advantages of software patents, namely, copying of the idea of a patent is prohibited and a stronger legal protection is ensured. One of the reasons of starting software patents is that these are now developed with substantial investment of finances and human resources and are responsible for better functioning machines, novel performance of microprocessors, and when transported through discs, it becomes a tangible product.

Devices being used for decryption are subject matter of patents. All the ICs can be protected through a separate regime. There are strong indications that software developed for masking information or avoiding infringement through special technique like the watermarking technology, will be converted into chips and then multiple protection may be available for software. The chip could be protected under the IC layout design or as a component of an overall hardware. Once hardware are protected through patents, it would be difficult to by-pass them. The external shape can be protected through registered design, and customer confidence can be achieved by protecting the product through a trademark/ trade name. It appears possible that such devices may be monopolised globally as the business of Internet gets into a few hands, which appears to be a distinct possibility.

8. CONCLUSION

The IPR professionals are faced with a totally new situation while ensuring that IP rights are not violated when business is transacted over the Internet. It would be better if new IP rights are avoided but at the same time, the interests of innovators need to be secured with the existing provisions. Whether a total governmental control over unauthorised reproduction and distribution of copyrighted works over Internet will work or not, is a difficult question to answer at this stage. If there are no controls then are we expecting it to be driven by market forces alone?

The experience of satellite communication and international telephone services may be helpful in solving some of the conflicts arising out of cross- boundary and simultaneous use of information. It appears that innovative technologies and industry self-regulation, rather than policing, may provide some answers. If there is a common and clear understanding about enforcing copyright laws, an effective awareness campaign may be beneficial for the end users, content providers and Internet access providers. It must dawn upon all that the society has to recognise the innovative work and reward the generators of innovations adequately, and others do not have a legal or moral right to earn on infringements. Ultimately, the purpose is to make the Internet economically viable for the benefit of the newly emerging information society, and this would largely depend on how successfully one is able to resolve the issues related to IPRs.

(This article written by R Saha, while working with Technology lnformation Forecasting and Assessment Council (TIFAC), appeared in the DESlDOC Bulletin of Information Technology, Vol. 20, Nos. 1 &2, January & March 2000, pp. 13-19 . Read the original article at

http://publications.drdo.gov.in/gsdl/collect/dbit/index/assoc/HASH0135.dir/dbit2001013.pdf

© R Saha

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