12 November, 2018

YP Sir
Baker v Seldon: (Copyright law)- principle- if there is a merger between idea and expression,
then such elements of literary expression cannot be protected under CR Law.
Such dichotomy doesn’t exist under Patents. If once a certain info is granted a patent, and the
defendant’s act falls within the claim of the Plaintiff- D is liable for infringement. So there is
strict liability.
But information as such is not protectable either under copyright or patent law. CL allows
info but there are limits in the case of functional information.

Confidential Information:
What is it? That lies privy to you but it has not been disclosed to others and has not been
shared in the public domain.
Breach happens often in business transactions and employer-employee relationships.
Example: I was previously teaching in Jodhpur. The electronics dept in IIT there used to
procure Aakash tablets. The govt. there wanted to give it to needy etc. and they gave tender
of producing to IIT. Price is generally X. IIT had to do it at much lower. So it launched a
global tender of a certain cost. A London co. (L1: lowest bidder) said they will deliver. They
were again a middleman and outsourced it to a Chinese Co. After 4-5 months, Govt. said we
will launch it on 2 October. Things had to be done at high speed and 2 scientists who were
looking into the technical specifications said we want to have a look. London invited them to
the Chinese plant. (IIT was responsible for the testing). London co. sent a Non-Disclosure
Agreement. Subject of the email was- NDA of China visit.
However, the terms were not actually limited to this but also limited sharing of the
information to outsiders in other ways. w/o any legal guidance scientists signed. … IIT was
not happy with the products being made. Engaged another co. in London that was a
middleman for China. They were in the talks and while discussing the earlier work they
figured that there were many problems with them. London co. got to know and sent a legal
notice saying that you are sharing our info with a third party-breach of NDA- pay damages or
we will start case as per contract in the Court of New York. YP was called to discuss. The
scientists were under the genuine impression that they hadn’t breached. But some 3000 pages
of info had been shared. How London got to know we don’t know.
What do you think is an appropriate remedy?
If a foreign court passes an ex-parte injunction- a remedy (though not always recommended)
is that of anti-suit injunction.

Also, what if here the contract would have been given to the latter Hyderabad company? He
didn’t answer ☹
Saltman Engg. V Campbell- if there is some CI that is required to not be disclosed, there is
breach of confidence even if there is no contract explicitly between them to disallow this.
Theoretical basis: the principle comes from the tort of unfair competition (unfair coz it’ll be
highly IMMORAL for someone to free-ride and gain in the process of trade through
information to which it was not entitled.)
2 kinds of actions that are mandated under TRIPS (not mandated under Paris)
1. In case of all products other than wines and spirits (because EU specifically
negotiated high level of remedy for wines and spirits, standard of protection is high.),
you can provide the remedy of passing off. – based on the fact that the person who is
copying from the GI has misled the people. So the misleading test is important.
2. Article 39- Trade Secrets Protection
39.1: Member states will take measures to protect CI as per Article 10 of the Paris
Convention.
39.2: Defines what kind of info has to be protected.

Article 39
1. In the course of ensuring effective protection against unfair competition as provided in
Article 10bis of the Paris Convention (1967), Members shall protect undisclosed information
in accordance with paragraph 2 and data submitted to governments or governmental
agencies in accordance with paragraph 3.
2. Natural and legal persons shall have the possibility of preventing information lawfully
within their control from being disclosed to, acquired by, or used by others without their
consent in a manner contrary to honest commercial practices10 so long as such information:
(a) is secret in the sense that it is not, as a body or in the precise configuration and assembly
of its components, generally known among or readily accessible to persons within the circles
that normally deal with the kind of information in question;
(b) has commercial value because it is secret; and
(c) has been subject to reasonable steps under the circumstances, by the person lawfully in
control of the information, to keep it secret.

Some countries have the notion that therefore trade secrets qualify as property. For
property, you have remedy in rem. But if there is a contract- contract is basis. So then
for a third party to be liable it would have to be established that it was aware that the
info was confidential. But in property, you can claim it back even if you have no
relations with the third party.

But in India we haven’t made it a property right. We call it a common right action for
breach of confidence. We haven’t been able to codify it.

Article sent discusses: Common law remedy- only damages. But courts of equity had
the power to do the balancing act. Ultimately merged both things.
What is unique about Indian law: by the time we started using these principles, they
were merged into one- so there were multiple remedies for breach of confidence.
 Why do we need codified law? To clarify principles.

2 major situations where breach of confidence arises (The article mentions 4)-
1. In continuance of trade
2. Non-compete contract between employer and employee.

The COCO V CLARK case laid down the Ps for breach of confidentiality.
P has a design for a moped. Enters into discussion with D- contract not signed really. After
some months, D starts manufacturing them. P sues.
The court said that there is no prima facie case, but asked that party to keep some money
aside for royalty if the P wins in the trial. No injunction coz’ there was no PF case.
(Injunction- PF case, BoC, irreparable harm).
Court establishes 3 important P’s
1. For successful breach- info is capable of protection: sometimes courts have said
that immoral info not capable of being protected, trivial/ vague info also. What’s
interesting- this case does not mention that the info must have commercial value.
(Unlike TRIPS). So here the scope is broader.
This is not an action of violation of privacy.
2. There is an obligation on the Def to keep in confidence: relationship between the
party is important for the court to determine if there is such an obligation. May be
explicit or might me implied from the nature of the relationship.
e.g. a photographer at a wedding knew he cannot disclose pictures outsides. He did,
the third guy got them published. Second is definitely liable. For the third- we’ll look
at later.
3. D uses this information in such a manner that breaches this duty: Might have
been done directly or indirectly. This could also arise out of releasing the information
to third parties.
- There must be a detriment to the party otherwise the third prong may not have been
satisfied.
- What kind of detriment? Loss or erosion of market. E.g. monopoly taken away.

14 November, 2018
If there is a contract it’s pretty much clear that the violations of the same would determine
whether it has been breached by disclosure of some info not allowed as per the NDA.
But what happens when there is no contract? – then the saltman case. There can be a duty
imputed on both the parties not to disclose what was being discussed. Then we went into
coco- v clark which gave the three-prong test.
John Richardson Brady v Chemical Equipment Process: Brady had invented an artificial
way of creating fodder for animals (like artificial mushrooms). Person applied for patent in
India and is pending. Have a JV with an Indian co. and set up a plant in Goa. Engage with the
D to provide panels for some work. Doesn’t get through. P realizes after a few months that
the D is also doing the same thing. Records had been shared by them as a consequence of
which this was possible.
Court granted injunction stating otherwise there will be irreparable harm.

Type of cases where copyright infringement and duty for non-disclosure taken together:
e.g. list of clients, addresses, telephone numbers. (rural v telephone: data in itself is not
protected- data is close to facts- modicum of creativity is needed. Copyright law provides
protection for expression and uses the Sequence, Structure and Organisation to decide if it
should be protected.) so this deals with protection of non-original work.
Unlike India and US, EU protects non-original databases. Argument was that even though
there may be no modicum of creativity but there is investment involved. So they have a
directive for the same.
So what happens in India? To the extent that CR law can’t protect, they will argue that the list
is propriety so if the employee is running away with it then there is a breach of duty to not
disclose.
Urmi v Chiang and Zee Telefilms:
Both dealt with concept notes for TV shows. Breach was held to be copyright infringement.
American express v Piapuri, Jan Peterson v Jet Airways: Special training was provided after
which the employee left. Here the court had refused to restraint. Court said the training
doesn’t have anything specific that could not have been gotten from somewhere else by the D
paying them. (but even if it is general info- the co. has invested in them and the concern is to
protect it.)

In yet other cases, there may have been a violation of non-compete clauses:
Niranjan Golikari case: SC put forth the test of reasonability in dealing with section 27 of
the ICA. SC said that till the effective period of the contract ends, the defendant is injuncted
from joining somewhere else.
Where the second employment is in the same business, of course it can be imputed that he’ll
use that info.
Article says we should not impute. But what if the info is specialised guidance?
And how do you decide reasonableness? What if the time period was 10 instead of 5 years?
In an American case, x was employed under Y. came to know of some patent at the patent
office. Knew how important it is for Y. quit the co., purchased that Patent and started his own
work. Case on him. He argued that the info. Is there in the public domain. But court held
against him saying that there are millions of pending patents and you don’t sit down to look
them up like that on the Patent Office Website. You got to know of this because of your work
at the firm and it is special information and relationship. And thus he was held liable.
This case is different from Jet Airways. Important that you understand in your head how that
is so.

15 November, 2018
Diljeet Titus v Alfred: Court applied the principle of Coco v clark and said that the clientele
information that the D had and had gotten from work at the P firm. Said he is restrained from
joining somewhere else.

Same reasoning was not applied in American Express v Priyapuri wherein because of her
special work there she had the information of top investors which she could have used at her
next firm. Court said no, if we are not sure of whether she will use it or not, she can’t be
barred.

Question is: how do we decide on the reasonability on the contract?

A blanket restraint on the employee from joining somewhere else would be barred under
section 27 of the ICA.

Courts subsequent to Niranjan have said that irrespective of the terms of the contract, after
resignation there is no obligation on him to not join somewhere else. Only during the
employment would the confidentiality apply. So these courts have felt that this is what is
reasonable. It is also most likely, that in most cases this will not be breached during the time
the person is working at the given place. Of course there can some jerks who will share it
somewhere else while working somewhere else.

IMPORTANT QUESTION: Is there a great difference between the D not divulging the
information shared with him during the course of employment and that done after the course
of employment and why should the court find one to be reasonable while not the other?

Most of these cases involve unequal bargaining power between employer and employee and
that’s why the courts have often decided against such restraint.

~ we know that the first P is that the information must be of a confidentiality nature. So
maybe you can define reasonability based on that. Also, what level was the D employed at.

The Indian courts jurisprudence on this subject is haphazard.

BUT- there can still be a separate action for breach of confidence (even if the contractual
breach provisions can’t be applicable).

THIRD PARTY AND STRANGERS:

e.g. suddenly in your e-mail, there is some information on Coke’s formula that you receive.

Article 39.2 footnote of the TRIPS Agreement

Article 39

1. In the course of ensuring effective protection against unfair competition as provided in Article
10bis of the Paris Convention (1967), Members shall protect undisclosed information in accordance
with paragraph 2 and data submitted to governments or governmental agencies in accordance with
paragraph 3.

2. Natural and legal persons shall have the possibility of preventing information lawfully within their
control from being disclosed to, acquired by, or used by others without their consent in a manner
contrary to honest commercial practices10 so long as such information:

(a) is secret in the sense that it is not, as a body or in the precise configuration and assembly of its
components, generally known among or readily accessible to persons within the circles that
normally deal with the kind of information in question;

(b) has commercial value because it is secret; and

(c) has been subject to reasonable steps under the circumstances, by the person lawfully in control
of the information, to keep it secret. 3. Members, when requiring, as a condition of approving the
marketing of pharmaceutical or of agricultural chemical products which utilize new chemical entities,
the submission of undisclosed test or other data, the origination of which involves a considerable
effort, shall protect such data against

Footnote: (10) For the purpose of this provision, "a manner contrary to honest commercial
practices" shall mean at least practices such as breach of contract, breach of confidence and
inducement to breach, and includes the acquisition of undisclosed information by third parties who
knew, or were grossly negligent in failing to know, that such practices were involved in the
acquisition.
In the Herbert Smith case, the P’s law firm gives some papers to the D’s law firm which they
were not actually supposed to receive. It calls the client to ask if they should inspect these
papers. Clients says yes. Can the D’s law firm use this information in this court? Will the D
have a remedy?

At the time of receipt by the D’s law firm, they didn’t know that they were wrongfully
receiving it. It was innocently used and not fraudulently. But the P will say no- because once
you knew the contents, we want you to be restrained from using it in the future.

Court said that the moment you got to know that it is wrongful, you were restrained from
using it. Especially because it is privileged communication.

But should the test for this knowledge be subjective or objective?

Dishonesty test: it is wrongful on your part if you have subjective knowledge of the same.
This is an old test. But now especially because of the 10 th footnote, we will use the objective
test. (or were grossly negligent in failing to know)

In this case, it is very clear that once they received the information, they knew that it is not
meant for them. So by virtue of their position in trade they were required to know that they
were not supposed to receive it (this objective test was laid down in the West Guard case).

In India: one similar case where we had granted an ex-parte. Not much.

But there is one case of that journalist (Indo Petrochemical case)

Beautiful judgment by Justice Ravi Bhatt. Asked what is “Price-Sensitive” about it? AND- In
a situation where there is overwhelming public interest, publishing of such information was
okay. The journalist here was a third party- source from within the co. had breached his duty
in disclosing this information- but we don’t know who that is and the journalist does not have
the obligation of revealing who it was.

19 November, 2018
Court was repetitively asking if this was price sensitive information? And finally held that it
was rightly disclosed in public interest.
Breach could be along with copyright or contractual infringement. And at such times, breach
of confidence could be used to get a remedy. It’s a remedy in equity and not of property and
based on principles such as unfair competition.
There is another article in the TRIPS agreement that covers certain stuff having information
called the “Regulatory Test Data”.
The fact that you have made a medicine does not directly allow you to get into the market as
it may be unsafe etc. thus, regulatory bodies test and screen such stuff so that people don’t
have to suffer from side effects.
Let’s take e.g. of a pharmaceutical product. Let’s say I am a co. called Roche. I come up with
this anti-cancer drug. I test it and at that stage itself test it for toxicity. Do lab tests. Next
stage- on mammals. Third stage- test on randomized humans to test for efficacy. Next phase
is after the drug is launched by staying vigilant to test its effect over people over a period of
time. These tests require huge amounts of data costing billions of dollars.
Now R needs a marketing approval in India. So the Indian law (drugs and cosmetics act)
requires the test to be specifically conducted on Indian people as well.
Here we have the Drugs Control Regulatory General which is the regulatory body. I get the
approvals from the for marketing. Now some international generic company called Ranbaxy
looks at this. Feels that the patent is very weak so let us infringe the patent, take a similar
drug to market and make some money. So they also file a marketing approval application.
But this submission is confidential.
But what the DCRG does is that it asks Ranbaxy to submit bio-equivalence because it is
seeking a permission over copy-cat drug so it doesn’t then have to do all those detailed data
testing that Roche had to.
Now what does TRIPS require under Article 39.3 and does India comply with it?

Article 39.3
Members, when requiring, as a condition of approving the marketing of pharmaceutical or of agricultural
chemical products which utilize new chemical entities, the submission of undisclosed test or other data, the
origination of which involves a considerable effort, shall protect such data against unfair commercial use. In
addition, Members shall protect such data against disclosure, except where necessary to protect the public, or
unless steps are taken to ensure that the data are protected against unfair commercial use.

So basically, it says that if WTO members require submission of regulatory data to allow
companies to enter into market with new products in relation to pharmaceutical and agro-
chemical, not in relation to others. (when entering with it for the first time). So where this
data requires considerable effort, which is often the case, it will be protected against use.

Does India protect such data against unfair commercial use?

The DCR here is not disclosing the data but peruses it for deciding whether the permission
should be granted. Does its use in the manner amount to unfair commercial use.

By virtue of principle of breach of confidentiality, if Roche is giving this data to DCR, why
should DCR not be bound by it?

In a similar old case in the US, it was held that this principle does not apply to public
authorities and so this act does not amount to breach. Providing such information is a
necessary trade-off for companies that want to get approvals for entering into the market.

The same was held in India as well.

Many scholars are trying to understand what this unfair commercial use is under the TRIPS
Agreement? Every time this information is passed on, compensation is to be given to the
originator. So, the DCR can keep on granting permissions as long as such compensation is
granted. This is called the compensatory mechanism.

India does not require this model to be applicable. So India is perhaps in violation of the
TRIPS agreement.

What is data exclusivity? Depending on the nature of the product, the law would say that
permission cannot be granted for similar stuff for some time – 5 years.

Under this model: though permission cannot be granted, Ranbaxy can independently generate
this data and ask for permission. That is not stopped under the Act.

Though as a business strategy, companies just prefer to wait instead of committing the same
tests again and again.

It is also considered to be unethical as for a copy drug you would again kill so many animals
etc. just for getting into the market early. You are just reinventing the wheel.

Under section 156, there is something.

Patent to bind Government :- Subject to the other provisions contained in this Act, a patent shall have to all
intents the like effect as against Government as it has against any person.

So now the DCR is a government authority..

Baers v UOI (?)

Justice Bhat said that this provision does not cast a positive obligation on the government to
prevent the infringement by stopping others. If infringed, of course there are remedies that it
provides. But if government itself is infringing, it will get covered under s156. And the
liability of the government would then be like it is also a private party- in this manner it is
binding the government.

(?) Justice said that this would de facto amount to data exclusivity. As coz’ someone is
infringing data, permission will not be granted. So despite India not agreeing to it, this case
shows the actual practice which is followed.

(?) This is called Patent linkage- after first linkage, if others applied, it will check with earlier
applicants. India does not have patent linkage as this is not there under any statutory
provisions. This is always what the case says and it points out section 156 does not intend to
provide this either.

It seems that India does not really allow data exclusivity. But this case might imply that we
actually do follow data exclusivity. This is also called patent linkage okay?

Last 5 minutes- Swagat asked something about 4 years and a provision about that. :/
>> Sir’s understanding- for a period of 4 years it is a new drug. For this time the CG grants
the permission (DCGR), subsequently state drug controllers can grant permission. As in this
initial period, things will become cleared. State regulators can dispense with the requirement
of the bioequivalence data that Central agency would have required had any further
companies other than the first one would have applied in the first 4 years. But after this
period, any generic company can get permission. So, rule 182 is important. But some have
criticised this saying that the regulatory conditions should be there irrespective of the time
after which application is made.

2nd Class:
Patent linkage- it’s a kind of regulation rather than a doctrine. Done in some countries e.g. the
USA and then after that second/third/ fourth applicants may not get it as the patent is still
subsisting given to the originator who has marketing approvals acquired for the same. In the
Baers case, court looked at s156, drugs and cosmetics act, patents act and said that patent
linkage is not really there in India. Said PL amounts to de facto data exclusivity and if it is
not there in the act, then we can’t do it.
So, in USA, for encouraging entrants of generics, the first person to challenge gets 180 days
of market exclusivity. In India, generics can be launched because they are sure to get
approvals for marketing.
In India, we can grant market approvals irrespective of patent not being there. Remedies for
that are separate and from distinct regulatory authorities.
So final position wrt data usage and allowance in India?

Some courts have said that price erosion is not a factor for not granting permission. (some
companies would want an injunction to be granted because others are reaping benefits
without conducting tests/data etc.
It is important to look into how courts decide whether injunctions should be granted for PF
case, or whether is should be left for the damages that would be paid later.
Also a problem with compensation is that they don’t know how many applicants will
continue to join in. so what they are interested in is compensation.
(TRIPS does not require data exclusivity under itself.)
(>> discussing the regulatory approvals and NOT Patents of FDC’s)
These days India is making something called fix-dose combinations (FDC) of multiple things
into one tablet. But it may also lead to life-threatening caused due to toxicity. Some are of the
view that this is irrational and should not be allowed.
But now if India has to collect data for this, they would want exclusivity but that is not there
in India, so they don’t really have an incentive in doing so (in the first 4 years). But if some
one does it once, of course others would like to follow after 4 years.
COMPANIES DON’T WANT TO CREATE DATA IN INDIA BECAUSE THERE IS NO
DATA EXCLUSIVITY. ESPECIALLY IN THE CASE OF FDC’S.
FDC’s and Patents: the risk in combining- may not be efficacious and could be toxic. Is there
an incentive for testing? Nah. Right now, for this the testing needs to happen in India and that
is what is creating a problem for us. Let’s keep the patent questions for patent classes. 😊
Criminal action for breach of confidence: there is not much jurisprudence for this.
Sometimes IT act also has been invoked. But no convictions under this so Sir is going to let it
go.
Modak case (eastern book case) is important. Have a look at this.

Trade-off between Patents and Trade Secrets:

First thing they want to do is to keep the knowledge in secret. But sometimes it may be not be
viable as reverse engineering is possible. And if someone independently copies your product,
then you would have no remedy against this.
But a defence for this would not be available under Patent infringement. Independent
innovation is not a defence for patent infringement. Here exclusivity is for 20 years.
Trade secrets will be there with you as long as you can keep it. He’s discussing his
favourite example- Coca Cola.
You have to decide strategically about your business decisions.
What is the quid pro quo in patents? In exchange of disclosing the information, the
government is giving you an EXCLUSIVITY FOR 20 YEARS (this is not the same as
monopoly because how much you are able to earn would still depend on how much market
you are able to attract and how it reacts to your product). This distinction is important to
know how patents don’t hit competition law.

20 November, 2018
Starting with Patent Act.
Keyword for patent is invention.
S 2(1)(g). I can’t find the definition :p
(ac) "capable of industrial application", in relation to an invention, means that the invention is
capable of being made or used in an industry;

The object of this Act is to grant patent and regulate activities related to it.
What is the criteria in the definition of patent?
One of the most important formal conditions is the disclosure of your patent while making
your application.
DISCLOSURE IS THE QUID PRO QUO OF PATENTS. IT DISINCENTIVIZES
DISCLOSURE OF PATENTED INVENTION. At least in theory, the idea is that after 20
years anyone would be able to make it and this will also make the market more competitive.
Before grant, there is a pre-grant mechanism to oppose under s25(1) under the Patent office
after the application is made. There is a publication of the invention that is going to be
patented, so anyone at large can raise concerns against it.
Sometimes the applicant themselves might not know that there is so much similar prior art.
After the grant- there is post-grant opposition on almost the same grounds (25(2)). Lasts for
one year after the grant of patent.
Once this opportunity is over, you can go to _IPAB?___ office and get it revoked.
S8- disclosure wrt foreign patents. Important because it helps India understand what the
position is wrt in other jurisdictions. You can make application anywhere in the world and get
a patent for it.
Rights are granted under s48 of the PA. if anyone infringes, you would not try to compare the
product of the P and D. what matters is the claims that have been patented by the PO and they
will try to find out whether the D’s product is infringing upon the claims THAT HAVE
BEEN APPROVED WRT MY INVENTION.
But to use this remedy, there would have to violation one of the rights which include buying,
selling, use (find out if exporting it is included).
e.g. patent owner’s rights under s48 don’t allow for export, then such an activity would
amount to infringement.
THEREFORE, infringement of product may not necessarily lead to violation of right.
Therefore construing the right correctly is important.
What are the defences available for the Defendant?
Includes all those things that would invalidate patent- incapable of industrial application, lack
of disclosure, lack of novelty, violation of sec 8, violation of sec 64 etc.
Revocation can also be asked a counter-claim when someone sues you for patent
infringement. On doing this, the case gets transferred to the HC automatically from the
District courts. In 5 jurisdictions, HC have original jurisdictions and would directly be
handling such matters. Otherwise just cases of infringement would be handled by the District
courts.
So, HC will then see if the patent is valid and if is then it will check for infringement.
Other kinds of defences: e.g. patentee could say that the act falls within research exemption
and hence my act is not equal to infringement (s47). Limited importation is also a good
defence. Also, on the ground that the product has been imported into India but payment for
this has been made abroad for the patent. This is called as exhaustion.
Next important thing: remedies- Injunctions are granted in equity based on BoC, irreparable
harm and public interest. And if it is interim, the court will look at whether there is a prima
facie case.
Parties like to ask for ex-parte orders and there is a lot of literature on how this is very
harmful for the D in patent matters and so is now granted carefully.
The third kind of infringement is anticipatory infringement. i.e. before the actual occurrence
of infringement. It is called ___ infringement?
Fourth- permanent injunction.
SECOND- accounts of profits. In themselves, this may not be sufficient. So you can ask for
this or DAMAGES as remedy. But you cannot ask for both.
Patent law is also about ensuring public access. So we have the concept of compulsory
licensing. For that, royalty etc. would be determined by the controller.
There are property and liability rules. PR is where based on the entitlement granted under
law, the patentee has a right to say no or ask for a market-based compensation from you. And
this is exclusion through voluntary market transactions.
Compulsory license is liability rules because valuation is being done by a third party. CL
could be where the patent product is being sold at a very high price, or there is very little
quantity that is not sufficient, or where the patentee is only importing and is not
manufacturing the product in India and maybe this might be going against India.
The government may also ask that it will let a third party produce and compensation shall be
paid to the patent owner.
Finally by using the principle of eminent domain, the government may acquire the patent and
the ownership here is transferred to the government unlike in the case of CL. There is no such
example of this having happened yet.
S66- hasn’t come into application yet. Briefly found to be in use in the case of Monsanto.
66. Revocation of patent in public interest.—Where the Central Government is of opinion that a
patent or the mode in which it is exercised is mischievous to the State or generally prejudicial to the
public, it may, after giving the patentee an opportunity to be heard, make a declaration to that effect
in the Official Gazette and thereupon the patent shall be deemed to be revoked.

So the govt. can simply say that the patent is prejudicial to public interest.
Other kinds of public interest provisions in the Patent Law:
To control the market power, certain kinds of conditions are void if introduced in the case of
licenses. So law says that some restrictive conditions found under s140 of the act are declared
to be void in public interest.
e.g. patent given provided you never challenge my patent.
I am providing you my patent provided you also buy my non-patented products.

2nd Class:
Every subsequent sale by you of a subsequent product eats up into my market as a patent
holder. A person who is buying from you is doing so at a much more discounted price. But as
an IP holder I can’t prohibit you from selling the physical product as the SoGA does not
allow me to do so. But at the same time, the sale amounts to an infringement of my IP right.
To resolve this situation there is the first sale doctrine, also called as exhaustion. Which
means that after I have once sold a product, I can’t pursue it further on. You ability to sell the
physical product which would otherwise lead to infringement of my IP is not considered as
infringement. So, IP law excuses such infringement so that it does not go against SoGA. IP is
also a good. The principle of first sale flows from property law.
e.g. seeds- which is a self-replicating technology. SC said you are entitled to sell only those
seeds that you got from the owner. Only this PHYSICAL COPY is covered under the first
sale doctrine. It does not allow you to harvest those seeds and sell the more seeds that you
would make out of that (which are copies). Same applies to books, photocopy would amount
to infringement.
Another e.g. If I am selling something in India at X price and another valid IP holder is
selling it at a cheaper price in another country, and somebody goes there and buys it and gets
it back to India- this would not infringe my IP right against importation even though it is
cheaper. So this is a situation of what you call as international exhaustion.
So, exhaustion is a small exception that is very important.
Copyright law provides exhaustion?
Patentability eligibility criteria: subject matter is important because there are certain things
that in public interest you would not want to be patented. E.g. some kinds of agricultural and
pharmaceutical methods, some medical products etc.
Novelty: the act does not use this term but “new products and processes”. You don’t want to
grant a patent over something that already exists. What you want to test is whether what the
application is made for something that constitutes prior art. i.e. it has been earlier used/
disclosed.
The use of the word “anticipation” – prior use, (section 13) …????

(Missed 2 minutes)

Let’s say someone invented a power point projector for the first time. Before that there was
some other kind of technology for display that existed- could have been by virtue of prior
publication or whatever. But not the projector.
An inventor’s job is to come out with an invention. If all of the invention X was disclosed in
a single document/ single prior art, would mean that its not patentable. But if the inventor has
read loads and come with something it might pass the novelty test. That’s how you come up
with new things.
Why don’t we look as combination of prior art and GK etc to look at whether there is
novelty? Because then, perhaps nothing would have constituted as novelty.
But if 2 people (could) have both reached the same product by combing available material,
then the product lacks novelty.
This is called as ENABLING PIECE OF PRIOR ART- because it enabled towards product
that is exactly claimed to have been made by another. The threshold of enablement is very
low.
INVENTIVE STEP is a qualitative inquiry. There you are allowed to mosaic/combine the
prior art. It is not allowed in novelty.
Novelty is a quantitative inquiry. You are trying to see if it falls within any individual piece
of prior art.
(prior Art) Disclosure can be 1. By publication. 2. By use. And this disclosure must be
enabling.
If by a reasonable try I can make it, it lacks novelty and is not enabling. But if requires too
much of scientific work, then it is not enabling.
Test for novelty- Novelty is a very low threshold. You only have to show that what you are
making is not EXISTING AS A WHOLE. Combining of steps is not covered. That is looked
into by inventive step. It tries to look at how far it has come from prior existing art.
Asian Electronics v Havells:
What does the law say? The question of whether it’s a new invention or not is dependent on
whether prior use and prior art anticipates the invention claimed in the patent application.
What’s anticipation- When you say that each individual piece of prior art
Prior to the technology of converting it from inductive to electronic, when you used to start a
tube light it used to flicker. AE filed a patent application in India and claimed what is called
as the conversion kit in these fluorescent lights which leads to them being switched on
without flickering. They got the patent.
Suit filed on Havells for infringement. H claimed that AE’s invention lacks novelty. Because
H found out that was has been claimed to be the conversion claim is exactly what has been
claimed by someone in the US for patents. (AE had filed in India). So for the purposes of
assessing novelty, court had to look whether the application made in the US anticipates what
has been claimed in India.
Justice Bhat looked into it and said that while tiny things might have been changed here and
there, what AE has done is an inevitable result (because there has been some reorganisation
of components in comparison to the US) of what has been claimed in the US.
So the prior art in the US was enabling. Sometimes this IR test is also called as reverse
infringement test.

Enabling art= by performing X, you have to reach Y. does not include trial and error. That is
all what the threshold is. For this purpose even a patent application is a prior art.
Don’t have notes for 22 November, 2018.

24 November, 2018
3 Amendments: ( , 2002, 2005) In one of these, the term of inventive step was put in.
Why is inventive step important?
And what separates novelty from inventiveness? There have been a lot of cases on this. At
the least this is controversial.
Novelty- we are looking at whether the application can be anticipated by virtue of common
General Knowledge: it’s an artificial construct around existing prior art- the person need not
have it in his memory (happened in the case of Enercon- that used to supply windmills metal
plates).
You look at prior art, enablement, but most significantly you are trying to impute knowledge
to this person- so you are trying to add some qualitative factors to this imputed person in
trade.
The test is thus the common sensical approach to find out whether it already exists or not.
Even if it can be derived by little bit of logical analysis- it is anticipatory.
Inventiveness is about how far the person has moved. ….

INVENTIVENESS under the Indian Act.

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

(PHOSITA Test: Person having …skilled in the art)

Feature of an invention:
e.g. all bottles have caps. But someone made one with a child lock- like the one put on
Harpic. So this is the technical contribution that you are trying to make to an invention.
Whether it is advanced or not is another question.
Technical advance:

Some jurisdictions also discuss the commercial success of the product beyond this for
purposes of evaluation. E.g. Harpic says look my product is the same only like others but the
commercial success is so much more due to this technology of child-lock. COMMERCIAL
SUCCESS is a secondary consideration.
But in INDIA- we have said that patent can be granted by just virtue of this definition which
could be read to mean TECHNICAL ADVANCE or ECONOMIC SIGNIFANCE which
makes the latter a primary concern in itself. They why on Earth does India have this when we
are somebody who actually hates patent?
Mr. Kela worked with a pharma MNC in 1970’s until they were drawn out. Few remained,
but most left. Mr. Kela then saw a great opportunity to make generics. Started his own plant
in Okhla. He copied from others and made his own model.
He was involved in all of the amendments made to the Patents Act. Was very close to BJP
and RSS and also the Congress. And they both want the same thing lol.
Mr. Kela said our innovation is that we are making things for cheaper. And how’s that
happening actually? Using copy products, not complying with laws and what not.
So these kind of arguments brought in the idea of economic being a separate test.

So economic success (which may not even amount commercial success) is a primary concern
here.

OBVIOUSNESS
The patent examiner should not have a hindsight bias. So the patent examiner is required to
put himself aside and think as a notional person.
PHOSITA (the person who is being used at the test)- it’s a notional person created by
the examiner to find out whether the invention is obvious. This is needed since the
examiner would have a hindsight bias. PHOSITA should be unimaginative so that it
cannot replace the inventor. So its UNIMGINATIVE, UNINVENTIVE.
FOUR PART TEST?
So traditionally, the law in comparative jurisdictions has evolved to ask a simple question-
what is it that we are trying to do?
We are trying to solve problems (PROBLEM- SOLUTION APPROACH)
For this
Step one:
Two: Determine the knowledge attributable to the person skilled in the art.
Three: Identify the position of prior art (novelty).
Four: in relation to prior art, what are the problems that have been solved.
Five: Is the invention made obvious to the person skilled in art.

Problem with this/ Limitation of test: art makers often don’t keep a problem in mind and
might be just working. So prior art may not give you any guidance for the product as there
may not be anything similar to such work done earlier.
Construction of PHOSITA is one of the important things that Examiner has to do.
Now this P is non-inventive, not willing to take risks but has reasonable knowledge.
However, in some specialised knowledge, we can construct P to have some specialised
knowledge. E.g. in cases of biotechnology. So the level of knowledge here has been raised.
UNLIKE NOVELTY, IN CASES OF INVENTIVENESS COMBINING OF PRIOR
PIECES OF ART IS ALLOWED. BECAUSE HERE WE WANT TO SEE HOW FAR
HAS THE INVENTOR MOVED WITH THE INVENTION.
We use the would/ could test here.
We would ask a question, that given that there were multiple things the inventor could have
done, why did he take a particular kind of steps. So this test would help us to find out,
whether the inventor used one approach over the other and in that would like the imaginative
qualities needed for being an inventor.
A famous case here: Windsurfing v Tober Marine- in this case they laid down, a four part
test.
1. Identify the inventive concept.
2. Then court has to assume the normally skilled but non-inventive person and impute
common GK to him
3. Compare with existing prior art.
4. Rule out hindsight bias. E.g. you might have read some other applications of similar
kinds but you should ignore that.
Examples:
Brown v Mohinder Paul: 2009 Delhi

Missed 10 minutes.
TVS Bajaj case:
Look at the differences between polyuterine helpers spring and bumper stop
So you have these shock absorbers in cars. What happens- they generate a lot of heat when
they are in motion. Traditionally what they do is use a bumper stop at the ends of the springs
that prevents them from touch each other when they contract on bumpy roads.
Also a helper spring is put inside the spring to help with the bump stop. This helper springers
had been used for many things but not for this purpose before this.
The spring is known, the material is known, the bumper stop is known. So what is inventive
about this?
The examiner refused it saying that this is nothing but the combining of prior art. KSR v
Teleflix case was referred to- which is very landmark in the USA.
Before the teleflix case, examiners used to allow such combining provided the prior art did
not teach, suggest or motivate. But KSR said that this TSM is not the sole test thought the
court said that it can be an additional test. So KSR tightened the test of non-obviousness. In
case of combining prior art, if it doesn’t directly teach the new invention does not mean that
patent would be granted. There have to be other direct technical tests that must be looked at.
The threshold of granting patents has been increased after this case.
This is also the approach of the Indian Patent Office now.
Does India grant combination patents?
Doesn’t seem so.

When we assess technical advance, one of the important questions is that some of the grounds
that we grant patents on may seem mundane or routine. E.g. of Express Sequence tags of
genes.
So the way in which the genes enclose each other, you run to the office with it. A question
that is raised- what is so inventive about this? It requires application of mental factor.
Though you will reach the same conclusion with the same steps, not everyone would be able
to perform those steps only. So the inventiveness criteria has been held to be existent due to
various factors in different jurisdictions.
e.g. there is this gene of relaxin that was found in the uterine of a woman that led to easy
delivery. So it was separated, purified and synthesised to make products for helping others
similarly.
Question was is this ethical, is there any invention- it’s already there in nature- is already its
known.
I mean dude it’s a gene- of course is known. But then why was it not being used. We
translated into usable, helpful products. Not everyone can. It’s an invention.

An old case- Vishvanath Radhe Shyam v Hindustan Metal Works

They came up with clips-
When you want to provide glaze to utensils- it has to be held in a careful specific manner.
Otherwise it comes out while applying on your face. So HMW came with clips to solve this
problem.
Court said that such workshop improvement should not be patentable. They said for eg. In
normal art, job of the tailor is to cut. That he can do it better that others is a betterment and
perfection of his job. That’s not patentable.
It was a minor workshop improvement for the SC.

What are the secondary concerns that we look at for providing patents?
Based on jurisdictions across the world-
1. Long felt need. If its been there and unsatisfied, and you have been able to solve it.
2. Commercial success
3. Serendipity inventions: you come out with something just by chance.

(Gandhimati Appliances Limited v Varadhraju) TABLE TOP WET GRINDER case:

for making IDLI ka batter. Usually the grinder is kept on the floor. It was developed in such a
manner that it could then be kept on the table top.
MADRAS HIGH COURT division bench. I’ll go back and read? I am kinda tired.
The court came up with the practical utility test. And said that so it should be allowed.
There is one specific paragraph-
But the court here does not look into technical advance in this case. Did it based on
commercial success- which is a secondary concern.
This case is before the 2002 inventive step definition.

What is the criteria for economic significance? (which is an independent concern in India.)
CS is only owing to the success of the product in the marker. ES is different as it could be
achieved by cutting costs, lax labour and environment standards etc. and if just by doing this
you could get a patent, then there is a problem. Remember the Mr. Kela example?

26 November, 2018

(div. bench) Delhi HC Decision- how do you calculate the inventive step?
ROCHE v CIPLA
R had filed a Patent Application in India and was granted for EH. It’s a compound having
polymorphic characteristics (A+B). It’s an anti-cancer drug. C understands that this
polymorphic stuff can be similarly copied so, it makes another polymorphic called B and
starts selling. R sued C for infringement in 2008. The single judge bench did not allow
temporary injunction as there was public interest in allowing C to continue as they were
selling it for much cheaper.
But the Div. bench said that PI is not a criteria, PF case is- and a credible case has been
shown by highlighting prior art in the work put forth by R. Injunction was still not granted
due to Cipla arguing that listen, R’s work already has patent in Europe and that is the only
ground on which they are arguing.
Case went back. The products of the P and the D were compared. BUT the basics of Patent
law is that you compare the product to the claims made. Case then went to division bench.
First examine the question of inventive step:
Cipla said that EH was structurally similar to prior art that had already been granted to some
company in Europe. Law says that anything that is prior art hits novelty, and requires you to
look into Inventive step. So Cipla’s argument was that the patent given to R shouldn’t have
been given in the first place.
So in the light of patents granted in the Europe, court had to decide about EH.
Court then came to the 5-step inventive-step test:
1. (Para 151) identify ordinary person skilled in the art.
2. Identify the inventive concept embodied in the patent
3. Impute to a normally skilled… to the art at a priority date (PHOSITA) (date of filing
of the first application- important so that anything that happens after this date, does
not affect inventive step/novelty of your product.)
4. Identify the difference between the matter cited and the invention. Compare the prior
art and the application in question
5. Finally, whether the steps beyond prior art- would the alleged invention have steps
that are obvious to the ordinary person.

But practically, court did not apply these tests itself lol. It said that the testimony of the
person who claimed ordinary knowledge revealed that R had made use of an inventive step
unlike CIPLA.
The only change R had done was replace phenyl by ethnyl. But Courts everywhere had said
that structural similarity does not mean that there is no inventive step provided that the prior
art itself did not motivate them to make a change. R had not been motivated like this. Court
asked why did R make this change?
R presented a witness.

Avoiding hindsight bias vala part is important. Look into it.

Court concluded that the witness of the Defendant is a chemist but was not a chemical
witness. Cipla needed to actually prove that there is lack of inventive step which it was
unable to do and it lost.

2nd Class: Same day

Cipla says if you look at all the pieces of prior art, the change made by R from what was
already available is obvious. And for this they had gotten a witness. W says that on the basis
of all the understanding, ethyl being replaced by methyl is obvious.
In the cross-examination, he was asked that how do you think R knew what ring to put it in
etc.- the W had no answer. When asked about what he thinks is obvious, he gave some very
simplistic answers. Further, he had come to all of his conclusions based on the material that
was given to him by CIPLA.
Court tried to look at what motivated the inventor? He had to find so many pieces of prior art
to do what he did. Expert was able to conclude so easily because all of the material was
already given to him. However, R researched and work hard to make those findings and they
could NOT BE SAID TO HAVE BEEN OBVIOUS. COURT SAID THAT THIS
PERSON HAD HINDSIGHT BIAS. ALL OF THESE FACTORS DISCOUNTED HIS
TESTIMONY.
So what’s the test that the court is trying to use?
On the date of application, was the D motivated by prior art to make something that maybe
structurally different but had different properties in function.
SO CIPLA was unable to show that there was lack of inventiveness.
So here the court didn’t have to follow the five-part test because it didn’t have to. Because the
PHOSITA itself could not show that there was lack of inventive step and had hindsight bias.
So overall what do we look at for inventive step?
1. What exactly is the feature of an invention?
2. For deciding technical advancement: Make use of PHOSITA.
Another important consideration in the Indian scenario is the economic significance. (looked
at in the Varadaraju case.)

~ if somebody comes saying that they have made a perpetual motion machine- it will not be
patented even without looking at the prototype. Because 1. It is impossible to be made- being
against the laws of thermodynamics 2. It is not commercially viable and of use anyway.

But just coz a product is not commercially viable does not mean patent will not be granted.
The job of the inventor is to show what is the use of the product in any sector etc.

But what if the claim that is made does not happen?

In some application in Canada, they said that metabolism will remain stable and acid level
will go down by taking the medicine. The Patent Office can ask them to actually show the
results. Here, the trial showed that the metabolism claim was not true. So the patent was
rejected.
But the SC said that the standard of sound prediction/ promise applied by the PO is a wrong
standard. Because Canadian patent law uses the word ‘usefulness’. And what the PO did
cannot be said to be the standard of usefulness for commercial viability.
Just showing that it has industrial applicability is enough. You don’t have to prove that
everything that you claimed is actually true. That is something for the regulatory bodies to
decide.
Why? Take the example of seedless brinjals. Suppose after 20 years, they begin to develop
seeds. But still, whatever technique was required in the beginning for seedlessness had been
done. So give the patent please.

Missed last 10 minutes.

27 November, 2018

Whatever you claim to be an invention must be of use in some particular industry.

If it is a method, it should BE ABLE TO BE UTILIZED in any particular industry.

Some jurisdictions have started to apply a higher standard called the Promise standard
wherein if you say that an invention will do something and it does not, then you will be held
liable for it.

Canada used it till like 2017 until when it had revoked many patents based on this reasoning.
Till the SC ruled otherwise.

In India- in the ongoing disputes involving Monsanto (Appeal pending in div. bench of DHC,
s66 of Patents Act, cases relating to Essential Commodities Act- because royalties were
capped on the seed technology etc. kind of cases). One such case is on the technology of
Monsanto failing. Technology is basically isolation of gene from Bacillus and introducing
into the cotton genome- then what it does it that it stops attack from pink … but over a period
of time- if one pesticide survives, progeny of those will also be resistant and become large in
number.

The resistance does not occur- because the problem is (now BG2 is failing in India, whereas
in Australia BG1 is still in use)- the reason is because farmers are required to keep a refuge.
Refuge is created so that if the pests are attacking in large number (and non BT are grown in
the non-refuge) it prevents by a higher chance the pest worms getting past resistance. And
many Indians don’t keep refuge.

Government has noticed that farmers in Maharashtra and Gujarat are facing crop failure due
to such reasons. So the GOI now wants the Monsanto’s patents to be revoked so that it can
easily be copied and used at low price. But the defence they want to use is that the technology
is not working. If that is so, then why did the Agriculture Ministry cap the prices (which
would be because the technology is soo important).

So there seems to be a policy confusion about what we should do with Monsanto.

___ were the pioneers in hybrids. Monsanto has a JV with __ called MMBL and is sub-
licensing to 40 companies including Nu__. Now, when in 2014 N had to renew the contract,
they were not getting a good deal. So they reached the government asking for the patent to be
revoked. Under s66, Monsanto needs to be heard. So now we are waiting for a decision to see
whether the promise doctrine would be applied.

DHC- Justice Bhat and Ravinder: s66 and Monsanto

They are trying to apply the promise doctrine though they haven’t explicitly used the words
and they want to revoke the patent based on this.

Definition of Industrial Application:

…being made or used in an industry’

Prior to 2006, BHC decision- Unicam Laboratories case:

UL is the defendant. P is a German co. having patent on some salts that have anti-diabetic
properties. Salt is called Tolbutamide. UL also starts producing this. Claim of UL is that
whatever is disclosed with the compound is perhaps not true for the salt form and lacks
industrial application of anti-diabetic properties proof as would have been required to be
proved by the P and we are making the salt. Hence the patent for P is revocable.

Court says that the practical usefulness does not matter. It is only failure to produce the
results promised that will invalidate the patent. So, court accepts that promise doctrine has
some basis.

“the only result that was professed to produce was anti-diabetic results without side-effects.
The D have been unable to prove that any of the compounds does not have sugar-lowering
properties to some extent. So, there is PROVED FAILURE on part of the D.”

Held that objection on ground of utility should fail. So lack of commercial utility etc. is not a
problem.
~~~~~~~~~~~~~~~~

If you apply the proved failure test to Monsanto, there is a chance to revoke the patent. But
this is not there under the Act’s definition of industrial test. So perhaps the BHC test should
not be applied as there is nothing mandating such a high threshold of relevant application.

More formal criterias can be added:

One of the most important one such:

1. Disclosure- there is often a quid pro qou. For exclusivity for some years, you are
willing to disclose.
2. Need to use that patent in the territory of India. If not willing to give voluntary
licenses for this etc., then compulsory licenses may be done.

So disclosure is a very important bargain. Patent holders want to give less and less to the
society and keep the most to themselves. But then

Under s64, patents could be revoked.

64 (h) that the complete specification does not sufficiently and fairly describe the invention and the
method by which it is to be performed, that is to say, that the description of the method or the
instructions for the working of the invention as contained in the complete specification are not
by themselves sufficient to enable a person in India possessing average skill in , and average
knowledge of, the art to which the invention relates, to work the invention, or that it does not disclose
the best method of performing it which was known to the applicant for the patent and for which he
was entitled to claim protection;
(i) that the scope of any claim of the complete specification is not sufficiently and clearly defined or
that any claim of the complete specification is not fairly based on the matter disclosed in the
specification;

S10(4)

(4) Every complete specification shall-

(a) fully and particularly describe the invention and its operation or use and the method by which it is
to be performed;
(b) disclose the best method of performing the invention which is known to the applicant and for
which he is entitled to claim protection; and
(c) end with a claim or claims defining the scope of the invention for which protection is claimed;
41
 [(d) be accompanied by an abstract to provide technical information on the invention:
Provided that-
(i) the Controller may amend the abstract for providing better information to third parties; and
(ii) if the applicant mentions a biological material in the specification which may not be described in
such a way as to satisfy clauses (a) and (b), and if such material is not available to the public, the
application shall be completed by depositing 42 [the material to an international depository authority
under the Budapest Treaty] and by fulfilling the following conditions, namely:-
The HC can revoke under s64 if…
Missed last 15 minutes essentially.

BHC said we will follow two things in such a case:

1. Describe invention in such a way that further experimentation is not needed.

2. Description must be fair and not unnecessarily difficult to follow.

Do D was saying this is insufficient.

Court said look into what has been fairly described

Specifically, the IPAB said: the claim appears to be lacking definitive features of important
parameters. As per case law, description should be such to clarify doubts.

So disclosure becomes the fourth, but a formal criteria.

Reading for next class: Novartis v UOI